Chapter 2100 – Patentability
Examination Guidelines for 35 U.S.C. 102 and 103 as Amended by the First Inventor to File Provisions of the Leahy-Smith America Invents Act (AIA)
AIA revised 102 and thereby changed what prior art is available during examination. None of these changes apply to pre-AIA cases.
Pre-AIA cases – Any app filed before March 16, 2013
Pre-AIA AKA First to invent cases are still subject to, most commonly, the 102(a), (b), (e), and 103(a) rejections we’re used to. If any claim in an app has priority to an effective filing date before March 16, 2013 (including PCT), it is a pre-AIA application.
First to invent essentially means inventors used to have a grace period to file an application after conception/reduction to practice of their invention to actually file an application. If an inventor could show due diligence, they could file an affidavit and “swear behind” references cited by an examiner in an art rejection.
Conception – think up idea
Actual reduction to practice – make invention
Contructive reduction to practice – file patent app
AIA cases – Any app filed on or after March 16, 2013
Statutes behind 102 and 103 are dissected elsewhere for another day… key takeaway here is that it is always in the best interest of an inventor to file ASAP!