Author: Stephanie M. Sanders
Editor: Adriana L. Burgy
With the enactment of the America Invents Act (AIA), many USPTO forms were updated to comply with the new law. This then begs the question as to which form to use and what date to use to figure out what forms to use.
PRE-AIA: If an application was filed before September 16, 2012, when a number of procedural aspects of the AIA came into effect, applicants should continue to use the USPTO’s pre-AIA forms. These forms are identified with the prefix PTO/SB.
POST-AIA: If an application was filed on or after September 16, 2012, applicants should use the USPTO’s AIA forms. These forms are identified with the prefix PTO/AIA.
There, however, may be instances when an application was filed on or after September 16, 2012, but a pre-AIA form may still be appropriate because, for example, the particular form was not affected by the AIA. That is, an applicant may still use form SB/08 to file an Information Disclosure Statement (IDS) in an application filed on or after September 16, 2012.
What date is used for USPTO forms? The actual day an application was filed is the date used to determine whether to use a pre-AIA or AIA form. Unlike establishing whether the first-to-invent (FTI) or first-inventor-to-file (FITF) provisions apply based on whether the application has an effective filing date on or after March 16, 2013, the filing date of a priority application is not relevant when choosing the correct form. For example, if a continuation application was filed on October 1, 2012, and claimed priority to a parent application filed October 1, 2010, the application would be examined under the first-to-invent, pre-AIA, legal regime (effective filing date before March 16, 2013), but would require the use of the new, AIA forms (actual filing date after September 16, 2012).
For a national stage application under § 371, the international filing date is used to determine whether a pre-AIA or AIA form is appropriate. This is the case because a PCT application and a national stage application under § 371 are simply two phases of the same application; as such, the filing date of the national stage application is the international filing date. For example, if a PCT application was filed on – and, thus, has an international filing date of – October 1, 2012, and the national stage application has a § 371(c) date of April 15, 2015, the applicant should use the AIA forms.
Both pre-AIA and AIA forms can be accessed from the USPTO’s Patents Forms webpage. Please see below for links to the pre-AIA and AIA sets of forms.
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