Maintaining Rights to an Application under the First to Invent Laws – a.k.a. Avoiding the AIA § 3(n)(1) Trap


Written by Leonard R. Svensson, Partner at Birch, Stewart, Kolasch & Birch, LLP.

Patent practitioners know by now that applications filed before March 16, 2013 will be evaluated under the current “first to invent” laws. Commentators are debating whether this may result in a “bump” of applications filed just before the deadline. But if you rush to file by the deadline, care must still be taken to ensure that the resulting application(s) maintain the right to be evaluated under the current “first to invent” regime.

Suppose one files a provisional application on March 15, 2013 and then one year later converts that case to a regular utility application. If that application is directed to an invention in the life science field, experience suggests that there is a very high chance that at least the broadest claim will be rejected for lack of written description or enablement under 35 USC § 112. If the applicant thereafter amends and narrows such a rejected claim to overcome those rejections, what is the consequence? The unfortunate consequence is that the applicant just lost, forever, the right to have any claims in that application or any divisionals/continuations evaluated under the current “first to invent” regime. This is the consequence of the § 3(n)(1) trap, due to the language in the statute that defines the effective date of an application with the language “shall apply to any application for patent that contains or contained at any time such a claim” having an effective date after the effective date of the “first to file” provisions. Having fallen into the trap, the applicant will have wasted all the work expended to file a provisional application before the March 16, 2011 deadline.

So what can applicants do to avoid the trap? Of course that simple answer is to avoid filing claims that might be rejected under § 112. But that is not a very satisfactory solution for applicants trying to obtain even reasonably broad claims. Another solution would be to “double” file – filing of a first regular utility application with claims that clearly will not be rejected under § 112 and also filing of a second PCT application (or another US utility application) with the desired broader claims. The PCT case can give desired support for all claims to be sought outside the United States, and the PCT can later be nationalized in the US to pursue the same claims. Meanwhile, the first US application can be used as the base case to pursue other claims while maintaining a pending application with claims that are clearly proper under § 112.

Cost considerations may prevent this suggested strategy from being used for all applications. But for important cases, applicants should consider this or some other strategy to avoid unwittingly, and unfortunately, falling into the § 3 (n)(1) trap.

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