MPEP § 2159.04 — Applicant Statement in Transition Applications Containing a Claimed Invention Having an Effective Filing Date on or After March 16, 2013
Ninth Edition, Revision 01.2024 · last revised R-11.2013
The Office revised 37 CFR 1.55 and 1.78 to require that if a nonprovisional application filed on or after March 16, 2013, claims the benefit of or priority to an application where the filing date of a foreign, U.S. provisional, U.S. nonprovisional, or international application is prior to March 16, 2013 (termed as “a transition application”), and also contains or contained at any time a claimed invention having an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect (“the 37 CFR 1.55 or 1.78 statement”). This information will assist the Office in determining whether the transition application is subject to AIA 35 U.S.C. 102 and 103 or pre-AIA 35 U.S.C. 102 and 103. However, applicant is not required to provide this information if the transition application claims the benefit of an earlier transition application in which a 37 CFR 1.55 or 37 CFR 1.78 statement has been filed. See 37 CFR 1.78(c)(6)(i). See also MPEP § 210.
Cited authority
- 37 CFR 1.55 Claim for foreign priority
- 37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications
- 35 U.S.C. 102 Conditions for patentability; novelty
- 35 U.S.C. 103 Conditions for patentability; non-obvious subject matter
- 35 U.S.C. 102 (pre-AIA) Conditions for patentability; novelty and loss of right to patent
- 35 U.S.C. 103 (pre-AIA) Conditions for patentability; non-obvious subject matter
- 210 Priority to, or the Benefit of, the Filing Date of a Prior-Filed Application
- 2159 Applicability Date Provisions and Determining Whether an Application Is Subject to the First Inventor To File Provisions of the AIA