A reminder of an AIA trap for the unwary – “checking the box”

The America Invents Act took effect on September 16, 2012 and on March 16, 2013.  Well over two years ago.  So we don’t have to keep worrying about it nowadays, right?

Wrong, very wrong.  We have to worry about it now even more than ever.

Here’s one example for the practitioner who is asked by foreign counsel to enter the US national phase from a PCT application.

Imagine this sequence of events.  An urgent email arrives from foreign counsel.  Please enter the US national phase based upon a PCT application.  It claims priority from a foreign patent application filed — you guessed it — exactly thirty months ago.

This isn’t a problem.  To avert abandonment all that you really need to do is go into EFS-Web, click on “national stage”, provide the PCT application number, and pay the base national phase fee.  Maybe go ahead and pay the search fee and examination fee, and maybe provide an Application Data Sheet.

You don’t need to provide a copy of the PCT application itself.  No specification, no claims, no drawings.  The USPTO will download that from a WIPO database later and you don’t have to do it.

You don’t need to provide a certified copy of the priority document.  The USPTO will likewise download that from the WIPO database later and you don’t have to do it.

As we all know, we then have all the time in the world (well, we have a couple of months) during which to hand in the signed inventor declarations and, if the PCT application was not in the English tongue, a translation of the application into English.

Having scrambled around to get the initial filing done and the base national fee paid, you now get to relax.  As time permits, you will prepare some inventor declarations and assignments and send them to foreign counsel to obtain inventor signatures.  And maybe a Power of Attorney from the assignee.

So where’s the trap for the unwary?

Look back at the dates.  If today (for example June 8, 2015) is the thirty-month date, then the priority application was filed December 8, 2012.  The PCT application was filed maybe December 8, 2013 (maybe earlier).  One of those two dates is prior to March 16, 2013.  The other of those two dates is on or after March 16, 2013.

This means that what you have on your hands is one of the dreaded “transition applications”.  For anyone who has suppressed their memory of this unpleasantness, a transition application is an application for which you, the practitioner, are required to take a position on whether the correct law for the Examiner to use in deciding what is patentable and what is not patentable is the “old law” or the “new law”.  And it is a certainty that ten years from now when your patent is being tested in litigation, the adversary will try to convince the judge and the jury that you told the USPTO the wrong answer on this point.  If you told the Examiner to use the “old law” then it is safe to assume the adversary will argue that the correct answer was “the new law”.  If you told the Examiner to use the “new law” then it is safe to assume the adversary will argue that the correct answer was “the old law”.  Either way you will be accused of misleading the USPTO about the correct law to apply.  You will be called as a witness at trial and every real and imagined flaw in your actions will be explored at length.

So what do you need to do?  You need to work out whether your PCT national-phase application contains now, or ever in the past contained, any claim whose effective filing date was on or after March 16, 2013.  Put in plain language the question is whether the PCT application now contains, or ever contained, a claim that was not fully supported by the foreign priority application.

So actually the trap for the unwary contains multiple sub-traps.

A first problem is that likely as not, the priority application is not in English.  How are you supposed to evaluate whether any one of the claims in the US national phase application is fully supported by the (non-English) priority application?

A second problem is that there might have been an amendment under Article 19, or an amendment under Article 34, in the PCT application.  This would have happened months or years before you ever touched this application.  You were not there to see it.  But for all you know, the claims in the PCT application as they stood prior to the Article 19 amendment were not fully supported by the priority application, even though the claims by the time you saw the application (the claims that are now pending in the US national phase application) are fully supported by the priority application.  On this set of facts, you would need to inform the Examiner to use the “new law”.  Why?  Because the application at any time contained a claim whose effective filing date was on or after March 16, 2013.

(Recall that when you enter the US national phase you are not causing a new US patent application to come into existence.  It is all the same application as the PCT application.  35 USC § 363.)

So a first duty on your part, as the practitioner handling an entry into the US national phase, will be to figure out whether your application is a “transition application”.  Assuming it is (as it likely will be between now and September) then you will need to review the previous history to see whether there was an Article 19 amendment or an Article 34 amendment.  You will need to work out whether the priority application does or does not fully support all of the claims that have ever been in the application as well as the claims presently in the application.  (Maybe forward this question to foreign counsel who can read the language in which the priority application was filed.)   And then either check the box or don’t check the box, depending on the result of your investigations.

At this point, you can relax, right?

No!  You cannot relax even after having done all of this, at least not if the specification, figures, or abstract of the PCT application contain subject matter not found in the priority document.  The problem of course is that tomorrow or next month or next year, you might amend the claims.  Such an amendment might yield a claim that is not fully supported by the priority document.  According to USPTO’s rules, at the time of the introduction of this claim you must “check the box”.

As usual, comments welcome.