AIA Patents: Trickle becomes a Stream

by Dennis Crouch

The first-to-invent rules of the America Invents Act of 2011 began taking effect in March 2013. New patent applications filed after the changeover date are examined under the new rules while those that were eather already on file or properly claim priority* to a pre-AIA filing are examined under the old rules. [updated to fix typo]

Although more than three years have passed since the changeover date, most new patents still fall under the old-rule. This long transition period is explained by the reality that most patents that issue claim priority to a prior patent filing document such as a foreign priority filing, international PCT application, US provisional application or parent non-provisional US filing.  Once the non-provisional application is filed, patent prosecution process still that typically takes around three years.  This results in an average pendency from priority filing to issuance of around five years.

The chart below shows results of a sample of 6,000 recently issued patents and their AIA status.  Time series is grouped by the quarter-year in which the patent issued.

* My reading of the statute is that the determination of whether an application is an AIA application or pre-AIA application is determined as a whole – for the whole application. If an application ever included a claim to an invention whose earliest effective filing date (counting priority claims) is on or after March 16 2013.  This automatically includes all applications filed after the March 2013 deadline that do not claim priority to any earlier applications. Applications filed before the March 2013 date are all pre-AIA because the new-matter restriction would require that all claims be associated with that pre-AIA filing date.  In the middle are applications filed after the March 2013 date but that claim priority to a pre-AIA application.  For those bridge applications, the patent applicants have been asked to self-determine whether their applications are considered pre- or post-AIA.