Author: Rachael P. Dippold, Ph.D.
Editor: Amanda K. Murphy, Ph.D.
The USPTO defines a transition application as an application that claims priority to an application filed before March 16, 2013, but also contains, or contained at any time, at least one claim that has an effective filing data after March 15, 2013. For prior art purposes, transition applications are examined solely through the lenses of AIA §§ 102(a)(1), (a)(2), and 103, as well as pre-AIA § 102(g). A typical example of a transition application is a continuation-in-part application that was filed after March 15, 2013, that claims benefit to a parent application filed before March 16, 2013, but also claims subject matter that was newly added in the child continuation-in-part.
It is important to note that an application is considered a transition application once post-March 15, 2013 subject matter is claimed, not merely by incorporating such material into the specification. Further, even if all claims to post-March 15, 2013 subject matter are later canceled, the application maintains its transition application status.
It is the duty of the Applicant to indicate that an application is a transition application by making a statement under 37 C.F.R. § 1.55 or 1.78, or a “transition statement.” The Applicant must provide such statement within the later of four months from the actual filing date of the application, four months from the date of entry into the national stage, sixteen months from the filing date of the prior filed provisional application, or the date that a first claim to post-March 15, 2013 matter is presented in the application (37 C.F.R. § 1.78). Current USPTO-provided Application Data Sheets include a simple check box to make this statement:
The USPTO advised in its February 2016 Patent Quality Chat that if a transition statement is not made within the time period set out in 37 C.F.R. § 1.78, Applicant should make such statement as soon as possible. This can be done by filing a corrected Application Data Sheet with the transition statement box checked and underlined and by filing a request to make a statement under §§ 1.55/1.78. The USPTO currently does not require a petition to make a statement after the required time period.
If the Applicant inadvertently makes a transition statement in an application that does not fit the requirements of a transition application, the transition statement can be rescinded. The USPTO has advised that it also currently does not require a petition to rescind a transition statement. Instead, a transition statement can be rescinded by filing a paper requesting to rescind the statement under §§ 1.55/1.78 and indicating that the transition statement was made in error.
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