“Checking the box” now being litigated

Every time we file a US patent application we worry about getting the wrong answer when we figure out whether or not to “check the box”:

checkFor anyone who has suppressed their memory of this unpleasantness, recall that 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.

Alert reader Wayne Keown has pointed out that it did not take ten years.  I learned from Wayne that there is now a pending federal court case in which an accused infringer has alleged that a patent applicant got the wrong answer on “checking the box.”

The case is Plasma Air Int’l, Inc. v. Global Plasma Solutions, LLC, (D. Conn. 3:15-cv-01054, filed July 9, 2015).  You can see the Complaint here.  In this case, the accused infringer alleges:

On information and belief, GPS knowingly and intentionally failed to disclose to the USPTO that the ‘507 Application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013 [failed to “check the box”].

[H]ad GPS disclosed to the USPTO that the ‘507 Application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013 [had GPS “checked the box”], the claims of the ‘507 Application would have been rejected in view of the foreign sales of the ion generating devices.

It’s far too soon, of course, to know what will happen in this federal court case.  Most federal court cases settle.  The case might settle before the merits are reached.  Even if the case does not settle, it might reach its conclusion without any reported discussion of the “check the box” issue.

Regardless of how the case ends, this lawsuit reminds all of us that we need to be extremely careful when we prepare and sign an Application Data Sheet.  We need to be extremely careful when we decide whether or not to “check the box”.

I have previously blogged about this “check the box” problem.  See A reminder of an AIA trap for the unwary – “checking the box” and How to correct a check-the-box mistake?.

What do you think about this?  Please post a comment below.

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