We are familiar with the “check-the-box” problem. The AIA provides that for a “transition” application, the law to be applied to determine what is patentable and what is not patentable is based on whether the application contains, or ever contained, at least one claim the effective filing date of which is on or after March 16, 2013. (A “transition” application is an application filed on or after March 16, 2013 that claims domestic benefit or foreign priority from an application filed prior to March 16, 2013.) The AIA did not say who exactly is supposed to figure out whether such a claim exists or existed. Unfortunately for applicants, in the February 14, 2013 Final Rules the USPTO successfully shifted this claim analysis burden to the applicant (more accurately, to the patent practitioner). It falls to the practitioner to work out whether or not this box should be checked. And years later in litigation of such a transition application, it will often happen that an accused infringer will devote enormous amounts of time and energy exploring whether a case can be made the the practitioner made a check-the-box mistake — checking the box when it should not have been checked, or failing to check the box when it should have been checked.
Which gets us to the topic of this blog posting. What if, during the pendency of a transition application, the practitioner discovers to his or her horror that a check-the-box mistake was made? Can the mistake be corrected? If so, how? Continue reading