Katie Merriman

March 16, 2013 marked a watershed date in the practice of patent law as the effective date of the Leahy-Smith America Invents Act (AIA). Per Section 3 of the AIA, patent applications having an effective filing date prior to the effective date of the AIA are subject to first-to-invent/ pre-AIA law, whereas applications claiming an effective filing date after the effective date of the AIA are subject to the first inventor-to-file provisions of the AIA, including post grant administrative challenges introduced as part of the AIA. Not surprisingly, there were a number of patent applications filed that bridged the March 16, 2013 AIA effective date. These so-called “transition applications” were filed after March 16, 2013 but claimed priority to an application filed before March 16, 2013. These applications would not be subject to the provisions of the AIA unless the application contained a claim that did not properly find support in the pre-AIA priority document(s). The Patent Trial and Appeal Board (PTAB) is taking aim at these transitional applications, and patents issuing therefrom, by casting a wide net with respect to eligibility under the AIA and closing apparent loopholes such that patent owners cannot reverse a finding that a patent is subject to AIA law, even if all of the claims of said patent are entitled to a pre-March 16, 2013 priority date.