On March 16, 2013, the First-Inventor-To-File (FITF) provisions of the America Invents Act (AIA) will become effective.  In preparation for the new statute, the USPTO published its final rules on the FITF on February 14, 2013. 

In general, these final rules relate to the statutory changes to the definitions of novelty and prior art.  One of the changes is that a U.S. patent or a U.S. patent application publication has a prior art effect as of the filing date of the foreign priority application for the subject matter disclosed in the priority document.  In reaction to this change, new Rule 37 CFR 1.55(f) will require applicants to systematically file a certified copy of the foreign application, or an interim copy of the foreign application, within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. 

Under pre-AIA rules, applicants only needed to file their certified copy at any time during prosecution, or if/when priority needed to be perfected in order to remove an intervening prior art.  The new rule is intended to ensure that a certified copy is placed in an application before its publication such that the priority document can be consulted in the event the U.S. application publication is considered prior art as of its priority date, for example by an examiner or a third party during the examination of another application filed under the AIA.

Of importance to design patent applicants, Rule 55(f) states that “[t]he time period in this paragraph does not apply in a design application.” This exception is consistent with the fact that design patent applications are not published.  Only design patents can become prior art. 

Thus, while there may be a need for an examiner of another AIA application or a third party to consult a priority document after a design patent issues, there would be no need to consult the priority document during prosecution of the design application.  Accordingly, design patent applicants can continue their current practice of filing their priority documents at any time during prosecution, for example with the payment of the Issue Fee.  Of course, there is no change to the practice of filing a certified copy of the priority document during prosecution if priority needs to be perfected, for example to remove an intervening prior art.