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Provisional Applications Filed Before March 16, 2013

posted Jan 18, 2013, 1:56 PM by Robert Crownover
The question arises, what law will apply to a Non-Provisional Patent Application filed after March 16, 2013 based on a Provisional Patent Application filed before March 16, 2013.

With the minefield of dangers inherent in to the Provisional Patent Application, a new danger exists when a Non-Provisional Application filed after the enactment of the AIA claims priority to a Provisional Patent Application filed before the enactment of the AIA.

If all the claims of the Non-Provisional Application can claim priority (be fully supported) to the Provisional Patent Application, the old (Pre-AIA) laws will apply.

However, as commonly happens, new material is introduced in the later filed Non-Provisional Patent Application. If this new material is claimed by ANY claim in the Non-Provisional, the ENTIRE Non-Provisional will be examined under the AIA laws. This substantially increases the scope of what can be considered prior-art. 

Even if a single dependent claim is filed without priority and later canceled, the application will be examined under the AIA rules.
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