How to correct a check-the-box mistake?

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).  check 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 “How to correct a check-the-box mistake?”

Is it copending if you filed it on the day the parent issued?

[As noted in the comments below, the Court of Appeals for the Federal Circuit reversed.  Same-day filers are safe.]

I’ve always assumed that if I manage to get my continuation or divisional application filed on the very day that the parent application issues, that’s good enough.  The domestic benefit under 35 USC § 120 will work.  Right?

Alert reader David Berry drew my attention to a February 11, 2015 ruling by Judge Richard G. Andrews in the U.S. District Court for the District of Delaware in a summary judgment motion in the case of Immersion Corp. v. HTC Corp. civil action 12-259.  The ruling suggests that when the USPTO grants a patent, it does so at about 12:01 AM on the Tuesday, and that a would-be continuation or divisional application filed after 12:01 AM on that Tuesday would lack copendency under 35 USC § 120.

Continue reading “Is it copending if you filed it on the day the parent issued?”

What will happen next with the Supreme Court case of CLS v Alice (software and business method patents)

In this blog I will try to review what has happened thus far in the CLS v Alice case, which deals with software and business method patents.  And I will talk about what the Supreme Court is likely to say when it decides this case next month.  Finally I will discuss the likely effect of the upcoming Supreme Court decision on the tens of thousands of already-issued software and business method patents.

Continue reading “What will happen next with the Supreme Court case of CLS v Alice (software and business method patents)”

PTAB speaks on 35 USC § 101 — or is it § 103? CRS v Frontline

Well, we are starting to see the work product of the Patent Trial and Appeal Board, whose goal for many of the new AIA proceedings is to dispose of them within a year.  Here’s the decision in CRS Advanced Technologies, Inc. v. Frontline Technologies, Inc. (Case CBM2012-00005), instituted January 23, 2013 and decided just under a year later on January 21, 2014.

CRS wanted to invalidate some of the claims of US Patent 6,675,151.  Doing so in court would likely have cost half a million dollars or more.  CRS picked the Covered Business Method approach and (I’d guess) probably spent well under a quarter million dollars.  And prevailed.

What I would have hoped is that the decision might help to clarify what practitioners need to do to draft patent applications that will survive post-grant review (whether before the PTAB or before the courts).  I don’t think I got my wish.  Here’s why I feel this way.  Continue reading “PTAB speaks on 35 USC § 101 — or is it § 103? CRS v Frontline”