What happens AFTER the 1.55(j) time frame has passed?

The Late 1.55/1.78 Statement
March 30, 2015

One complication of the America Invents Act is the selection of law (AIA or Pre-AIA) for applications whose priority date and U.S. filing date straddle the critical date of March 16, 2013. For these so called “transition” applications (i.e., applications having an effective U.S. filing date on or after March 16, 2013, but a priority date before March 16, 2013), if the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide “a statement to that effect”within the later of four months from the actual U.S. filing date, four months from the entry into the US PCT national stage, or sixteen months from the filing date of the prior-filed foreign application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the application. See 37 C.F.R. 1.55(j) and 1.78(a)(6).

In other words, for transitional applications, if any claim of the application is supported only by an application filed after March 16, 2013 and not by any of the application’s pre-March 16, 2013 priority applications, then applicant must make a statement to such effect to the USPTO in a timely manner. This statement, or lack thereof, enables the USPTO to apply the correct set of laws in transition applications.

There will be times, however, when the need for the “statement” is only discovered after the time frames set forth in the rules have lapsed. An applicant should file a 1.55/1.78 statement as soon as the applicant becomes aware that the statement is necessary and has been unintentionally overlooked in order to make sure that the application will be examined under the correct statutory framework. In such a case, if the need for a 1.55/1.78 statement is not discovered until after the application is allowed, then in order to ensure that the 1.55 statement is considered by the USPTO and to ensure that the application is examined under the correct statutory framework, the applicant should file the 1.55 statement along with a Request for Continued Examination (RCE). If the issue fee has already been paid, a petition to withdraw the application from issue will be needed as well when filing the RCE.

It is therefore important for applicants to determine as soon as possible whether a statement under 37 CRF 1.55 of 1.78 needs to be made in U.S. transition applications.

This situation can be thought of as being similar to the situation where an applicant realizes that they are aware of material prior art that should have been submitted upon filing the application. With the 1.55/1.78 statement, it is possible that the new AIA laws could introduce new art that would affect the patentability of one or more claims, similar to the references in an IDS. Therefore, applicants should submit them both (prior art and the statement) as soon as possible so that the examination process is thorough from the start, to avoid wasting time and possibly increasing costs. Delay in either case could create the need for filing an RCE or possibly even filing a reexamination or reissue if the patent issues. If the statement was necessary but not submitted during initial prosecution, the issue doesn’t go away simply because the patent issued, just as with prior art.