By ​​​​​​​Joe Hetz and Chris Gerardot ( September 5, 2018, 1:49 PM EDT) -- The first-inventor-to-file provisions of the America Invents Act apply to any patent issuing from an application that contains, or contained at any time, a claim that has an effective filing date on or after March 16, 2013.[1] The question of whether FITF provisions apply can arise when a continuation application filed on or after March 16, 2013, claims priority to a parent application filed before March 16, 2013. One might assume that such a continuation application would be controlled by the pre-FITF rules if it was filed with the same specification and drawings as the parent application. However, in several Patent Trial and Appeal Board decisions,[2] most recently in Schul International Company LLC v. EMSEAL Joint Systems Ltd.,[3] the PTAB held that if a claim unsupported by 35 U.S.C. § 112(a) is entered during prosecution of the continuation application, the continuation application and its resulting patent will be controlled by the FITF provisions of the AIA. This means that the resulting patent can be challenged under post-grant review and by references that qualify as prior art only under the FITF provisions. The present article describes this § 112(a) trap and provides suggestions for exploiting and avoiding it....