Priority disputes, the subject matter of Chapter 1, are conflicts between patents or patent applications (or between a patent and a patent application) in a common jurisdiction (such as the United States) that claim the same invention, and the resolution of a priority dispute is a determination of which party will be granted the patent (or which party’s patent will be enforceable). A subject separate and distinct from priority is patentability, which focuses on the invention itself rather than when, in what form, or by whom a patent application is filed. To be patentable, an invention must be novel, useful, and nonobvious. Of these three requirements, usefulness (utility) is easily met and rarely a matter of dispute, but novelty and nonobviousness have acquired complex definitions embodied in extensive sets of rules and parameters that have evolved with the advancement of both technology and communications first in the Industrial Age and then in the Information Age. Novelty and nonobviousness are the subjects of Chapters 6 and 7 of this book, respectively, and both refer to comparisons between an invention and the “prior art.”

2.1 Prior Art and the First-to-File Rule

“Prior art” is defined as everything that an invention can be compared to when determining whether the invention is worthy of a patent. Prior art thus goes beyond patents and patent applications that raise priority disputes to include a large body of knowledge and activity in a wide variety of forms. The scope of this body is set forth by statute rather than, for example, economic factors or moral standards. Included within the statutory scope are subject matter that is both published and unpublished and subject matter that is widely known as well as that known only to a small circle of individuals. Information that is highly developed and of proven accuracy, viability, or reliability is included, but prior art can also extend to information that has not been tested or verified. And while knowledge that has been known for years, decades, or more will be prior art, knowledge known only for a matter of days may also be prior art.

The patent statute divides prior art into categories, which include other patents and patent applications that claim the same invention, other patents and patent applications that disclose the same invention without claiming it, published literature and public disclosures revealing the invention, and commercial activity involving use or other exploitation of the invention. Prior art also extends beyond subject matter that is the same as the invention to include any knowledge or disclosure that would indicate or suggest that the innovation embodied in the invention is less than one that would “promote the Progress of Science and useful Arts” to a degree that would justify the grant of a patent. Thus, while an invention may be an acknowledged departure from all that preceded it, the preceding matter is still prior art and the departure is evaluated for its magnitude, significance, import, or effect before a patent will be granted on the invention. Otherwise stated, prior knowledge or activity that poses questions of nonobviousness as well as prior knowledge or activity that poses questions of novelty can both be prior art.

While the first-to-file rule of the AIA is best known as the means by which priority disputes that fall under the AIA are resolved, the rule extends further by modifying the definition of prior art as a whole. Patent applications filed on or after March 16, 2013, will therefore face prior art defined by the first-to-file rule, while the prior art for those filed before that date will still be defined by the first-to-invent rule. Certain applications filed after March 16, 2013, will still be subject to the first-to-invent rule, however, and some will be subject to both. This chapter sets forth the differences between the two definitions of prior art and shows how to determine which one will govern for a given application. First, however, it is helpful to know the categories of prior art, that is, which types of materials and activities constitute prior art, under either the first-to-invent rule, the first-to-file rule, or both.

2.2 “But Is It Art?”: The Art of Prior Art

The prior art that is most often encountered and most readily recognized and defined, and in many cases most readily located, are U.S. patents and published U.S. patent applications. These patents and patent applications are prior art regardless of what they claim as their own inventions. It is a common occurrence for a description or other information that is not covered by the claims of a patent (or application) to nevertheless appear in the body of the patent and to have a bearing on the novelty or nonobviousness of what a different individual may later claim as an invention. The information may, for example, appear in a background section of the patent or in a comparative demonstration included among the patent’s working examples, with the patentee either failing to recognize or acknowledge the novelty, potential patentability, or potential value of the information. The information may also have been something that the patentee had initially included in the claim scope but later reworded the claims to exclude. The reason for trimming the claims in this manner may have been a loss of confidence in the invention’s utility when expressed in its original broad scope or a decision to narrow the scope of the claims in order to expedite the claims’ approval and hence the issuance of the patent.

A second category of prior art is published literature such as news media, technical journals, technical data sheets and other product literature, books and electronically published materials in general, archived reports, treatises, and academic theses, and any materials or information that have been made available to the public at large or to those in the relevant field of technology without confidentiality restrictions. This includes patents granted outside the United States and patent applications published by bodies other than the United States Patent and Trademark Office (USPTO). A third major category is commercial activity, which includes use in manufacturing, sales, and offers for sale.

A fourth category, introduced by the AIA, is disclosure that is “otherwise available to the public.” Other than by these four words, this category is not defined by the AIA but is characterized by the Patent and Trademark Office as a “catch-all provision” that “permits decision makers to focus on whether the disclosure was ‘available to the public,’ rather than the means by which the claimed invention became available to the public.”¹ Examples listed by the Patent and Trademark Office include a student thesis in a university library, a poster display or other information disseminated at a scientific meeting, subject matter in a laid-open (i.e., published) patent application, a document electronically posted in the Internet, and a commercial transaction that does not constitute a sale under the Uniform Commercial Code. The “otherwise available to the public” category and the published literature category thus overlap.

2.3 And Is It “Prior”?: Pre-AIA Law vs. the AIA

The “art” of prior art thus differs between pre-AIA law and the AIA, but the AIA is best known for its introduction of the first-to-file rule, which imposes its greatest differences on the “prior” of “prior art,” with more art being “prior” under the AIA than pre-AIA. Both standards have their exceptions, however, and the topic is best addressed by examining each category of prior art individually.

2.3.1 U.S. Patents and Published U.S. Patent Applications

For clarity, the patents and patent applications that serve as prior art will be referred to herein as “reference” patents and patent applications to distinguish them from patent applications that they are cited against. These reference patents and patent applications are those that name another individual as inventor, that is, someone other than the inventor seeking to overcome them as prior art, and this is true regardless of whether in addition to the “other” inventor the reference also names the inventor against whose application they are cited. As prior art, reference patents and reference published² patent applications are treated the same. Both achieve their prior art status upon publication,³ but once these documents have achieved that status, their dates as prior art references are their effective filing dates.⁴ Under pre-AIA law, the inventor whose application is rejected over one of these references could remove the reference from consideration as prior art regardless of its content, and would therefore no longer need to distinguish over it, by showing that the inventor had an earlier date of invention. Such a showing most often consists of documentation of the inventor’s own conception of the invention at a date preceding the reference’s effective filing date, provided that no more than 1 year had passed between the publication of the reference and the inventor’s effective filing date.

Under the AIA, the inventor can remove the reference patent or application from consideration as prior art only by showing that the inventor’s own effective filing date precedes the effective filing date of the reference. To avoid having to show that her/his invention bears a patentable distinction (i.e., is both novel and nonobvious) over the reference, therefore, the inventor will have to have filed sooner under the AIA than under pre-AIA law; the inventor can no longer go back to the inventor’s conception date to predate the reference. There are three exceptions to this rule, that is, three scenarios in which despite the reference’s earlier effective filing date, the inventor can still remove the reference from consideration as prior art. One is by showing that the subject matter of the reference was obtained directly or indirectly from the inventor. The second is by showing that the inventor himself or herself, or one obtaining the subject matter directly or indirectly from the inventor, had publicly disclosed the subject matter first. The third is by showing that the subject matter of the reference and that of the inventor’s patent application were owned by the same person (or entity) or that the inventor named in the reference and the inventor against whom the reference is cited were both under an obligation (usually by contract) to assign their inventions to the same person or entity. There is however an exception within each of these exceptions: if the publication of the reference (i.e., the issue date if the reference is a patent and the publication date if the reference is a published application) occurred more than 1 year before the effective filing date of the application that the reference is cited against, the earlier filing date of the reference cannot be overcome regardless of whether the subject matter of the earlier-filed reference was obtained from the later-filing inventor or whether the subject matters of both were commonly owned. Also note that the inventor cannot rely on the inventor’s own public disclosure to overcome the reference if that public disclosure was more than a year prior to the effective filing date, since by such a disclosure the inventor would be creating a self-imposed bar to patentability, discussed in Chapter 3.

Figure 2.1 illustrates the principles of this category of prior art by comparing each of several references to the claims of an application under examination (or the claims of a patent whose validity is challenged). The horizontal arrows are time lines progressing from left to right, and for the application under examination (the time line at the top of the figure), the date of invention and the effective filing date are shown, while for each reference, the effective filing date and the date of publication or patenting are shown. The various references differ in their effective filing dates, their issuance or publication dates, or both, all relative to the dates of the claims under examination. The text under the time line for each reference states the means by which the inventor can address the reference to establish the patentability of the claims under examination, and the results pursuant to both pre-AIA law and the AIA are presented. As noted in the caption, the distinction between pre-AIA and AIA is determined by the effective filing date of the claims under examination, not that of the reference. The chart shows that in certain cases, the reference can be removed from consideration as prior art, either by showing that the claims under examination had an earlier invention date (Refs. 1 and 2) or an earlier effective filing date (Ref. 3), while in other cases, the reference cannot be removed and the inventor must distinguish the claims under examination by showing how the subject matter of the claims differs from that of the reference. Note that the inventor claiming an earlier effective filing date may still have to show that the earlier filing date is indeed “effective,” that is, that the application that was filed on that date provides proper support for the claims under examination.

2.3.2 Patents and Patent Applications Other than those of the United States

Searches for prior art through patent databases will often produce patents and published patent applications of other countries and authorities in addition to those of the United States. The Patent Cooperation Treaty (PCT) is one such authority, and international patent applications filed and published under the treaty are common examples of non-U.S. documents produced by these searches. The European Patent Office (EPO) is another such authority, producing published European patent applications and granted European patents, and further authorities are other regional and national patent offices throughout the world that variously publish regional and national patents as well as the applications themselves and abstracts of the applications. Since each of these documents is a publication that is accessible worldwide, each is as much prior art for its descriptive content as a U.S. patent or published U.S. application. This is true regardless of whether the claims of these documents are any narrower in scope than the descriptive material in their texts and, in the case of published applications and abstracts, whether they ever mature into patents. In addition, the exceptions applicable to U.S. patents and published patent applications, as set forth in Section 2.3.1, earlier in time apply to non-U.S. patents and published patent applications in the same way.

The difference between these non-U.S. patents and published applications and those of the U.S. when serving as prior art lies in their effective dates as prior art—the effective filing dates of the non-U.S. documents are their dates of publication rather than their filing dates. Non-U.S. patents and patent applications therefore lack the date dichotomy of their U.S. counterparts; the date on which these non-U.S. documents emerge as prior art against a U.S. patent application and the date that an applicant in the USPTO must predate with evidence of earlier action in order to remove these documents from consideration as prior art are the same date. For inventions governed by pre-AIA law, an earlier date of invention can suffice as that earlier action, while for inventions that are subject to the AIA, the only earlier action that will suffice is an earlier effective U.S. filing date. Whichever earlier action the U.S. applicant is entitled to use, the U.S. applicant need not be concerned with the filing date of the non-U.S. patent or published application, only its publication date, and since many of these non-U.S. documents are published at different stages, its earliest publication date.

Figure 2.2 illustrates the principles of this category of prior art in a manner analogous to Figure 2.1. Note that in all cases, the effective filing date of the reference is irrelevant.

Many of these non-U.S. patents and published patent applications will have U.S. counterparts, however. This occurs when the same application is filed in multiple countries or jurisdictions at different dates under procedures that allow the date of the earliest such filing to serve as the effective filing date for the succeeding filings in the other countries. U.S. inventors who seek patent coverage beyond the United States typically file an application first in the United States, then abroad, often through the PCT, using a procedure that will afford the foreign application the benefit of the filing date of the U.S. application. Foreign nationals commonly follow this procedure in reverse, by first filing a patent application in their native country or at a PCT receiving office or the EPO and later filing a U.S. patent application early enough to provide the U.S. application with the benefit of the filing date of the first-filed application. The filing date of the first-filed application then achieves significance as the effective filing date of the U.S. application. The prior art of concern is then the U.S. application rather than the foreign document, since the U.S. application, and not the foreign document, will have the benefit of the foreign document’s filing date as its effective filing date. This will be true even though all of the documents are likely to be identical in their descriptive content. Thus, a reference PCT or European document that originated at the PCT or the EPO and was not later filed as a U.S. application can be eliminated by an inventor who can show a filing date that precedes the publication date of the reference, while a reference PCT or European document that originated at the PCT or the EPO and was later filed as a U.S. application will require the later inventor to show a filing date that precedes the reference’s PCT or European filing date, since the PCT or European filing date becomes the effective filing date of the U.S. application, even if the actual filing of the U.S. application occurred much later. If a non-U.S. patent document of concern is produced by a search for prior art, one should therefore look for any corresponding U.S. document to see if the filing date of the non-U.S. document affords the U.S. document an earlier effective date as prior art than both the filing date of the U.S. document and the publication date of the non-U.S. document.

2.3.3 Other Published Literature

Publications other than patents and patent applications, such as the technical journal articles and other examples listed previously, typically do not involve complex determinations of their effective dates as prior art, since in all cases, the effective date is simply the date of publication. Neither the date on which a manuscript is submitted to a trade or technical journal for publication nor the date on which it is accepted for publication, for example, is of consequence; the paper’s effective date as prior art is the publication date of the issue in which the paper will appear. Questions can still arise however as to what constitutes publication and at what date publication occurs. An example of a publication that does not involve actual dissemination to the public is the acquisition by a university library of an academic dissertation such as a doctoral thesis. The publication date of the dissertation as prior art is the date on which the dissertation is archived in the library records, whether by card catalog or by electronic database, so that a user can be informed upon perusing the records that the document is present in the library and can access it for reading. “Publication” is thus defined by accessibility to the public rather than by actual distribution.

Under pre-AIA law, an inventor who is not the author of the publication can remove the publication from consideration as prior art by showing an earlier date of invention, provided that not more than 1 year had passed between the publication date and the inventor’s effective filing date. Under the AIA, the inventor’s earlier date of invention will not suffice; the inventor must show an earlier effective filing date. The three exceptions that apply in the case of prior art patents and published patent applications apply here as well—the inventor who cannot show an earlier effective filing date can still remove the publication from consideration as prior art if the inventor can show that the subject matter of the publication was obtained directly or indirectly from the inventor, or that the inventor or one obtaining the subject matter directly or indirectly from the inventor had publicly disclosed the subject matter first, or that the subject matter of the publication and that of the inventors’ patent application were commonly owned. Here as well, however, if the publication has a publication date that predates the inventor’s effective filing date by more than 1 year, none of the exceptions apply. If the publication is the inventor’s own publication, it does not constitute prior art under either pre-AIA law or the AIA, provided that the publication occurred no more than 1 year before the inventor’s effective filing date.

Figure 2.3 illustrates the principles of this category of prior art in a manner analogous to Figure 2.1 and Figure 2.2.

2.3.4 Commercial Activities

Commercial activities that constitute prior art do so regardless of whether they are also published and in some cases regardless of the degree to which they are explained or otherwise described to the industry or the public at large, if at all. The two commercial activities that the patent statute identifies as prior art are “public use” of an invention and the placement of an invention “on sale.” “Public use” is the use of a process, substance, material, or piece of equipment, depending on the invention that the use is cited against, in a commercial or production setting, and “on sale” includes entering into commercial transactions for the performance of the process or the sale of the substance, material, or equipment, as well as offers for the transactions. Prior art “public uses” are not limited to those that generate income to the user, sales are not limited in terms of the income they generate (compensation for a sale may be other than monetary), and offers for sale are not limited to those that are accepted. For a use to be “public,” it must be accessible to the public, that is, not kept confidential. For sales and offers for sale to qualify, the subject matter of the sale must be “ready for patenting,” that is, far enough conceived that it needs only a simple reduction to practice (if it has not already been so) for implementation or use. Exceptions to public uses and sales are those that are primarily for purposes of experimentation, that is, assessment of the technical functionality (e.g., as opposed to market appeal) of what is being implemented or sold. Patent courts recognize that the distinction between commercial use and experimentation is often a matter of degree, however, and those who seek to deny the prior art status of a commercial use or sale by claiming it was only for experimental purposes do not often succeed.

Under pre-AIA law, the only public uses and sales that constituted prior art were those that occurred in the United States; those confined to regions outside the United States were not prior art to the later-filing patent applicant. While public uses had to be accessible to the public to qualify as prior art, qualifying prior art sales and offers included those that were accessible to the public as well as those that were kept secret, such as sales made between parties who were under an obligation of confidentiality to the inventor. A patent applicant could remove public uses and sales (including offers) by others from consideration as prior art by showing that the inventor’s date of invention was earlier, provided that not more than 1 year had passed between the use or sale date and the inventor’s effective filing date, analogous to publication-type prior art. The AIA introduces several changes. The restriction to the United States is removed, and therefore public uses and sales occurring anywhere in the world can now qualify as prior art. The AIA introduces a new limitation however by eliminating secret sales from prior art. To remove public uses and sales from consideration as prior art, the first-to-file policy of the AIA requires the inventor to show an earlier effective filing date; an earlier date of invention by itself will not suffice.

Figure 2.4 and Figure 2.5 illustrate the principles of this category of prior art, Figure 2.4 addressing public uses and Figure 2.5 addressing sales and offers for sale. Each figure is presented in a manner analogous to the preceding figures, but a vertical line has been added to indicate the 1-year date prior to the effective filing date of the claims under examination. Note that certain uses and sales or offers for sale are not prior art, and it is therefore unnecessary to either remove them from consideration as prior art or to distinguish over them in terms of subject matter. In some cases, this is due to the confidential nature of the use, sale, or offer and in others the fact that the use, sale, or offer is outside the United States.

2.4 A Servant of Two Masters?: The “Effective Filing Date” and Its Role in Determining the Governing Rule

The term “effective filing date” is used in reference to U.S. patents and patent applications, both those under examination for the possible grant of a patent and those that are cited as prior art. As Sections 2.3.1–2.3.5 indicate, the term has relevance in both first-to-invent and first-to-file cases. Every patent application, published or otherwise, and every patent has an actual filing date, which is its date of receipt by the USPTO. The actual filing date may also be the effective filing date, but in many cases, the effective filing date is an earlier date, specifically that of another, earlier-filed patent application, published or not, which was still pending as of the filing date of the later application and of which the later application explicitly claims a filing date benefit. By the time the later application is either published or patented, the earlier application may be either withdrawn, abandoned, still pending, or itself matured into a patent, but in all cases, the use of its filing date as an effective filing date is unchanged. The earlier patent application may itself be a U.S. application but may also be a foreign or international patent application. Thus, a U.S. patent application may have the benefit of the filing date of an earlier-filed PCT patent application, an earlier-filed European (or other regional) application, an earlier-filed national application of a foreign country, or an earlier-filed U.S. application as its effective filing date. The latest-filed application may indeed be the last in a series of three or more applications, filed in succession, U.S. and otherwise, and enjoy the benefit of the first-filed of the series.

Applications with effective filing dates before March 16, 2013, will be governed by the pre-AIA examination standards including the first-to-invent rule, while those with effective filing dates on or after March 16, 2013, will be governed by the AIA examination standards and therefore the first-to-file rule. Individual claims of an application will be governed by the rule applicable to each claim, and an application with an actual filing date that is after the transition date but claims a filing date benefit from an application filed before the transition date may have certain claims that are entitled to the benefit and other claims that are not. Different claims may thus be governed by different rules.

Effective filing dates play a similar role in U.S. patents and published patent applications that are cited as prior art references. The prior art dates of these references are their effective filing dates under both standards. To defeat this prior art, therefore, the inventor whose patent is being examined can do so by showing an invention date that is earlier than the effective filing date of the reference if the later inventor’s claims are entitled to the pre-AIA standard, but the inventor’s own effective filing date must be earlier if the later inventor’s claims fall under the AIA standard. As noted in the preceding section, non-U.S. patents and published applications are treated differently depending on whether the later inventor’s claims fall under the pre-AIA standard or the AIA standard. In those cases where the filing date of the prior art patent or patent application is its effective date as prior art, the inventor against whose application the document is compared can only defeat the document by having an effective filing date that precedes the effective filing date of the document.

The use of the filing date of one application as an effective filing date of another, later application occurs in different ways, depending on whether the earlier application is a U.S. application or a non-U.S. application. The sharing of the benefit of a filing date across country lines is termed a “right of priority,” established under the Paris Convention for the Protection of Industrial Property, first adopted in 1883. An application claiming a right of priority from an earlier application filed in a different country must be filed within 1 year of the earlier application and must make an express claim to the earlier application, listing its number, country, and filing date. International sharing of a filing date benefit can also be achieved by first filing an international application through the PCT and then filing the same application in one or more of the countries that are signatories to the PCT, a procedure referred to as “entering the national phase” of the PCT application, but one that is subject to time limitations set by the treaty.

The sharing of a filing date benefit between applications within the United States arises when an application is refiled after its original filing, either at the initiative of the inventor or pursuant to a requirement by the USPTO, in some cases followed by abandonment or withdrawal of the original application and in others without abandonment or withdrawal, leaving both applications pending or allowing both to mature into patents. One example of such a filing is a “divisional” application, which is filed in response to a “restriction requirement,” that is, a decision by a USPTO examiner that the claims of an original application cover two or more inventions and thereby require separate searches. To respond to the requirement, the inventor must elect one of the inventions for examination and can then file one or more divisional applications as necessary to address each of the remaining (unelected) inventions. Another example is a “continuation” application, which is a refiling of the original application at the initiative of the inventor to allow the inventor more time and opportunity to respond to rejections from the examiner or to introduce a shift in claiming strategy. A third example is a “continuation-in-part” application, which is part continuation and partly an introduction of new descriptive material, possibly including new claims that may be broader in scope than those of the original. Continuation-in-part applications are often filed to incorporate useful material that has arisen after the filing of the original application.⁵

The benefit of an earlier U.S. filing date can also be drawn from a provisional patent application. Provisional patent applications are not actually applications for patent but rather documents that are filed with the USPTO as placeholders for true (nonprovisional) patent applications, that is, those that will be examined by the USPTO for possible grant of a patent. The purpose of a provisional application is thus to obtain a filing date that can be used as the effective filing date for a later-filed nonprovisional application. As Chapter 10 will explain in more detail, a provisional application can be filed without the organization or formatting features, or the full set of parts, that the USPTO requires of nonprovisional patent applications. Indeed, provisional patent applications are often documents prepared for other purposes, such as a publication in a technical journal, a presentation to potential investors, or a grant proposal. To obtain the benefit of the provisional’s filing date, the invention must be made the subject of a nonprovisional application filed within a year of the provisional.

The value of a provisional application lies in its descriptive content; for a nonprovisional to have the benefit of the provisional’s filing date, one or more of the claims of the nonprovisional must have descriptive support in the provisional. This in fact is true of any patent application that claims the filing date of an earlier patent application as its effective fling date, whether the earlier application is a U.S. application, provisional or nonprovisional, or a non-U.S. application, and whether the later application is itself a nonprovisional replacing a provisional, or a continuation, a continuation-in-part, a divisional, or a U.S. counterpart of a foreign application. Questions of the presence or adequacy of descriptive support arise most often when the earlier application is a provisional and the later is a nonprovisional or when the earlier is a nonprovisional and the later is a continuation-in-part. In both cases, the subject matter of certain claims of the later-filed application may be well described in the earlier application and therefore enjoy the benefit of the earlier filing date, while other claims lack that support and will therefore be limited to the later filing date.

2.5 Conclusion

How long will the pre-AIA law and the AIA coexist? Some sense of the answer can be gained from data on the pendency of patent applications together with the statutorily defined terms of issued patents. With certain exceptions, the statutory expiration date of a U.S. patent is 20 years from the patent’s effective filing date. Notable exceptions are patents whose effective filing dates are drawn from a provisional application or a foreign priority application, in which cases the 20-year term is measured from the filing date of the U.S. nonprovisional application, thereby affording the U.S. patent an expiration date that can be as much as 21 years from the patent’s effective filing date. When a patent is the subject of a lawsuit, the litigation can extend well beyond the patent’s expiration date, in which case the applicability of pre-AIA law may do so likewise, extending the force of the pre-AIA law even further into the future. Pendency data from the USPTO indicate that the number of utility (nonprovisional) patent applications filed in the year 2012 was 542,815, increasing at a rate of about 40,000 applications per year, and as of May 2013, over 600,000 patent applications were pending in the USPTO and awaiting examination. The average pendency of a patent application as of May 2013 was approximately 30 months, but the body of pending applications is back-loaded due to a surge in both provisional and nonprovisional filings that occurred just before March 16, 2013, by those seeking to ensure that their applications fell under the first-to-invent rule. In the first 2 months of 2013, the number of patent applications filed per day was approximately 1,500, of which approximately 800 were provisional applications, while in the days immediately preceding March 16, the filing rate reached approximately 13,800 per day, of which approximately 13,000 were provisionals.

For these reasons, many pending applications will continue to be examined, and many issued patents will have their validity governed, by pre-AIA standards well beyond the transition date. It will therefore be necessary to maintain familiarity with both the pre-AIA and AIA systems well into the year 2034 and possibly beyond. A certain degree of comfort however can be drawn from the fact that the greater number of cases where pre-AIA law will apply will be pending patent applications undergoing the process of examination. With the current average pendency of 30 months and the stated goal of the USPTO to reduce this to 20 months, an early tapering off of the number of cases subject to the pre-AIA standard can be expected.