Legal Definitions - grandparent application

A grandparent application refers to a specific type of patent application that was filed under the patent laws existing in the United States *before* the significant changes introduced by the America Invents Act (AIA). Specifically, it designates an application that has an effective filing date *before* March 16, 2013, which was the date when the "first-inventor-to-file" provisions of the AIA became fully effective.

Before the AIA, the U.S. operated under a "first-to-invent" system, meaning the patent was awarded to the person who could prove they invented the technology first, regardless of who filed the patent application first. The AIA transitioned the U.S. to a "first-inventor-to-file" system, aligning it with most other countries, where the patent is generally awarded to the first inventor to file a patent application. Grandparent applications are therefore governed by the older "first-to-invent" rules, particularly concerning what constitutes "prior art" (existing knowledge or inventions that can prevent an invention from being patented) against the invention.

• Example 1: Corporate Research and Development

  A pharmaceutical company spent years developing a novel drug compound. They filed a comprehensive patent application for this compound and its manufacturing process in November 2012. This application was subsequently examined by the U.S. Patent and Trademark Office (USPTO) over several years.

  How it illustrates the term: Because this patent application was filed before March 16, 2013, it is considered a grandparent application. This means that when the patent examiner assesses the novelty and non-obviousness of the drug compound, they will apply the "first-to-invent" prior art rules that were in place before the AIA. If a competitor later filed a similar application in 2014, the pharmaceutical company's grandparent application would benefit from the older rules, potentially making it easier to overcome certain prior art challenges by demonstrating an earlier date of invention.

• Example 2: Individual Inventor with a Provisional Application

  An independent inventor developed a unique mechanism for a self-adjusting bicycle seat. To secure an early filing date, they filed a provisional patent application in January 2012. A year later, in February 2013, they filed a non-provisional patent application claiming priority back to the original provisional application, fully describing the invention.

  How it illustrates the term: Even though the non-provisional application was filed just before the AIA's effective date, and importantly, it claims priority to a provisional application filed even earlier (before March 16, 2013), the entire application is treated as a grandparent application. This allows the inventor to benefit from the "first-to-invent" prior art rules for the subject matter disclosed in the original provisional application, which could be advantageous if there were any competing inventions or publications that emerged around the same time.

• Example 3: Patent Litigation Scenario

  Two electronics companies, AlphaTech and BetaCorp, are in a legal dispute over a patent for a new type of display technology. AlphaTech's patent application was filed in 22011, while BetaCorp's application for a similar technology was filed in 2014.

  How it illustrates the term: AlphaTech's patent application is a grandparent application because it was filed before March 16, 2013. Its validity and the scope of its claims will be judged under the pre-AIA "first-to-invent" rules regarding prior art. BetaCorp's application, filed after the AIA's effective date, will be judged under the "first-inventor-to-file" rules. This fundamental difference in how prior art is assessed can be a critical factor in the litigation, potentially influencing which company's patent is deemed valid and enforceable, as the standards for what constitutes prior art and how it applies differ significantly between the two legal frameworks.