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Dealing With The AIA Trap For Transition Applications
Published By Law360 September 05, 2018

On September 5, 2018, Joe Hetz and Christopher Gerardot's article, "Dealing With The AIA Trap For Transition Applications" was published in Law360.

The first-inventor-to-file provisions of the America Invents Act apply to any patent issuing from an application that contains, or contained at any time, a claim that has an effective filing date on or after March 16, 2013.[1] The question of whether FITF provisions apply can arise when a continuation application filed on or after March 16, 2013, claims priority to a parent application filed before March 16, 2013. One might assume that such a continuation application would be controlled by the pre-FITF rules if it was filed with the same specification and drawings as the parent application. However, in several Patent Trial and Appeal Board decisions,[2] most recently in Schul International Company LLC v. EMSEAL Joint Systems Ltd.,[3] the PTAB held that if a claim unsupported by 35 U.S.C. § 112(a) is entered during prosecution of the continuation application, the continuation application and its resulting patent will be controlled by the FITF provisions of the AIA. This means that the resulting patent can be challenged under post-grant review and by references that qualify as prior art only under the FITF provisions. The present article describes this § 112(a) trap and provides suggestions for exploiting and avoiding it.

“Transition Application”

The § 112(a) trap comes about when an application is filed as a “transition application.” A transition application is an application with a filing date on or after March 16, 2013, that claims priority to a parent application with a filing date before March 16, 2013. A patent issuing from a transition application is subject to the FITF provisions of the AIA if “the patent contains, or the corresponding application contained at any time, a claim that has an effective filing date on or after March 16, 2013.”[4] It is easy to see how a claim in a continuation-in-part transition application can trigger the FITF provisions, such as when the claim is directed to new paragraphs in the detailed description or new drawings that were presented for the first time in the CIP. However, many practitioners may be surprised to learn that a transition application filed as a continuation application (with the same description and figures as the parent application) can also trigger the FITF provisions. This was the situation encountered in Schul International.

Schul International v. EMSEAL

The patent at issue, which was based on a transition application filed as a continuation application, was directed to a fire and water resistant expansion joint system and contained a claim reciting a foam having a density “when installed in a range of about 200 kg/m3 to about 700 kg/ m3.” The PTAB agreed with the petitioner’s assertion that the parent application failed to demonstrate possession of the claimed invention because it lacked disclosure of this range when the foam was installed. Citing the statute and prior PTAB decisions, the PTAB stated that a patent based on a transition application is subject to the FITF provisions if it “contains ... at least one claim that was not disclosed in compliance with the written description and enablement requirements.”[5]

Because the claim at issue lacked written description support, the PTAB concluded that its effective filing date was the actual filing date of the continuation application — not the filing date of the parent application. As the actual filing date was after March 16, 2013, the PTAB held that the patent was subject to the FITF provisions, namely post-grant review challenge. This is significant because PGR provides the opportunity to challenge claims under 35 U.S.C. § 112(a), and that challenge is not available in an inter partes review, the only post-grant challenge available for patents that are not subject to the FITF provisions. Further, the claims were challenged using a new reference that would not have qualified as prior art if the claims were awarded the parent application’s filing date. The PTAB, in its institution decision, held that it is more likely than not that all of the claims of the patent are anticipated by this new reference.[6]

Implications

Several implications arise when an unsupported claim is presented in a transition application. As shown in Schul International, the resulting transition patent is governed by the FITF provisions, meaning that the patent is subject to PGR and post-grant challenges under § 112(a). As also shown in Schul International, claims given a later effective filing date in the resulting transition patent may be subject to references that qualify as prior art only because of that later filing date. This means that the published version of the parent application/patent may qualify as prior art and be used in a § 103 challenge to the claims if the publication occurs more than a year before the effective filing date of the claims. Additional prior art may also arise due to the different rules for qualifying some types of prior art under the FITF provisions (e.g., the FITF provisions no longer restrict publications from being prior art under § 102 based on geography or language).[7] Further, while not addressed by Schul International, because of the “contains or contained at any time” language in the AIA,[8] an unsupported claim entered during prosecution may cause the transition patent to fall under the FITF provisions even if that claim is cancelled during prosecution and does not appear in the issued patent. Additionally, because of the “taints the chain” provisions in the AIA,[9] a continuation or divisional application filed from a transition application that contained an unsupported claim would also be subject to the FITF provisions — even if an unsupported claim was never presented in such continuation or divisional application. So, if a transition application falls in the § 112(a) trap because it presented an unsupported claim, cancelling the unsupported claim will not free the transition application, its resulting patent, or its progeny from the trap.

Practice Pointers

When investigating a transition patent, a challenger should investigate whether there are any unsupported claims in the issued patent, as such claims can cause the patent to be subject to PGR and additional prior art challenges. Even if the transition patent does not contain an unsupported claim, the challenger should investigate whether an unsupported claim was ever pending during prosecution of that application or during prosecution of any parent application filed on or after March 16, 2013. § 112(a) rejections issued by a patent examiner in those applications can provide a strong starting point for this analysis. From a prosecution perspective, practitioners need to be vigilant throughout prosecution to avoid adding an unsupported claim, especially since cancelling the unsupported claim later in prosecution does not appear to remove the application from the § 112(a) trap. And if the applicant receives a § 112(a) rejection during prosecution, the applicant should consider appealing the rejection if it is not overcome during prosecution, as an unwithdrawn § 112(a) rejection may be used as prime facie evidence that the transition application should fall under the FITF provisions.

Further, as a continuation application is particularly susceptible to this trap when filed to obtain broader protection than its parent application (especially when ranges are involved, such as in Schul International), it might be wise to file two continuation applications — one with claims that are clearly supported and another with more aggressive claims that may be subject to an argument that they are unsupported. That way, even if the continuation application with the more aggressive claims falls under the FITF provisions, the other continuation application will not, thus providing an “untainted” branch in the family tree. While expensive, this approach may be worth the cost if the resulting patent is likely to be enforced and challenged.

While the above strategies may succeed in avoiding the § 112(a) trap, other strategies do not appear as promising. For example, some practitioners might believe that a transition application can be shielded from the FITF provisions by filing a copy of the pre-March 16, 2013, parent application as the continuation application and, at a later date, filing a preliminary amendment to add new claims or amend the as-filed claims to claim additional subject matter. The theory behind that filing strategy is that an unsupported claim term may be deemed new matter if presented in the application as filed (similar to a CIP) but would only be subject to invalidation for lack of written description — and not deemed new matter — if presented in an amendment entered after the filing date of the continuation application. However, the claim term that triggered the FITF provisions in Schul International was presented after the application was filed.[10] So, at least according to the PTAB, the presentation of an unsupported claim at any time during prosecution — not just with the filing of the application — can trigger the FITF provisions.

Further, perhaps not surprisingly, the practitioner should not rely on a lack of self-declaration of FITF eligibility on an application data sheet to avoid the FITF provisions. The U.S. Patent and Trademark Office-provided ADS form[11] provides a checkbox for an applicant to declare that a transition application should be examined under the FITF provisions of the AIA. However, that box was not checked in the transition application in Schul or several other PTAB decisions on this topic.[12] Thus, the ADS box is not dispositive on this issue.

Conclusion

Whether looking to challenge a transition patent or prosecuting a transition application, the practitioner should consider the § 112(a) trap. As time goes by, there will be fewer and fewer transition applications filed, and the § 112(a) trap may be less relevant. However, those that are filed may be part of a strategy to keep an application pending with the hope of adding claims to cover later-developed technology with high commercial value. Exploiting or avoiding the § 112(a) trap may be especially desirable in that situation.

Joe Hetz is a shareholder and Chris Gerardot is an associate at Brinks Gilson & Lione. The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

[1] AIA §§ 3(n)(1), 6(f)(2)(A).

[2] U.S. Endodontics LLC v. Gold Standard Instruments LLC, Case PGR2015-00019, Paper No. 54 (PTAB Dec. 28, 2016); Inguran LLC v. Premium Genetics (UK) Ltd., Case PGR2015-00017, Paper No. 8 (PTAB Dec. 22, 2015).

[3] Schul International Company LLC v. EMSEAL Joint Systems Ltd., Case PGR2017-00053, Paper No. 10 (PTAB April 9, 2018).

[4] Id. at 10; AIA §§ 3(n)(1), 6(f)(2)(A).

[5] See Schul International, Paper No. 10 at 11.

[6] Id. at 52.

[7] AIA § 3(b), 35 U.S.C. §§ 102(a)(1), (2).

[8] AIA § 3(n)(1).

[9] AIA § 3(n)(1)(B).

[10] Schul International, Paper No. 10 at 15-16.

[11] USPTO Application Data Sheet, form PTO/AIA/14 (02-18).

[12] See File history of Patent No. 9,526,262, Application Data Sheet filed Nov. 13, 2011 (patent challenged in Schul International); see also File History of Patent No. 8,876,991, Application Data Sheet filed Jan. 29, 2014 (patent challenged in Endodontics, LLC); see also File History of Patent No. 8,933,395, Application Data Sheet filed Jan. 31, 2014 (patent challenged in Inguran, LLC).

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