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In considering a novel issue of Post-Grant Review (PGR) eligibility, the Patent Trial and Appeal Board followed the straightforward language of the America Invents Act (“AIA”), and longstanding precedent, holding that post-filing amendments to a pre-AIA patent application do not change its effective filing date and, thus, do not make it eligible for PGR.  David O.B.A. Adebimpe v. Doang-Trang T. Vu & The Johns Hopkins Univ., Case PGR2016-00020, Paper No. 14 (P.T.A.B. July 25, 2016).

According to AIA § 6(f)(2)(A) and § 3(n)(1) , PGRs are available only for patents issuing from applications having at least one claim with an effective filing date on or after March 16, 2013.  The term “effective filing date” for a claimed invention is defined by 35 U.S.C. § 100(i), and can only be the actual filing date or earlier.

The patent which was the subject of the PGR petition (US 9,108,890) had an actual filing date of February 25, 2013.  Because the actual filing date was before March 16, 2013, under the terms of the AIA it was not eligible for PGR.

The Petitioner unsuccessfully argued that certain claims, presented in prosecution after March 16, 2013, were based on new matter and thus had an effective filing date after March 16, 2013.  This interpretation of “effective filing date” is inconsistent with 35 U.S.C. § 100(i).  Such an interpretation is also inconsistent with longstanding precedent rejecting a “late claiming” doctrine for determining the effective filing date of an application.  See, e.g., Westphal v. Fawzi, 666 F.2d 575, 577 (C.C.P.A. 1981) (holding that “[a]n amendment of a claim or a later filed claim does not change the ‘date of the application’ as the reference date for applicability of the time bars in § 102(b).”).

Although the PTAB did not designate its decision as “precedential,” prospective petitioners should not expect to succeed in initiating PGR review of a patent having an actual filing date earlier than March 16, 2013.