For those entering the US national phase on and after September 16, 2014 … recall the “check the box” problem

We all recall the nightmare of having to figure out whether or not to “check the box”.  You know the box that I am talking about:


Well, a nice member of our PCT listserv pointed out today that September 16, 2014 is an interesting day for the “check the box” problem.  I wonder how many readers of this blog already know why this is?

When we enter the US national phase, quite often this happens on the last possible day, meaning 30 months after the priority date.  And quite often when a PCT application gets filed, this happens on the last possible day, meaning 12 months after the priority date.

So if we enter the US national phase for example on September 16, 2014, likely as not our situation will force us to have to decide whether or not to “check the box”.  Our US national-phase application will likely claim priority from an application filed before March 16, 2013.  And we will have no choice but to have to figure out whether some claim that is in the PCT application now, or that has even been in the PCT application, has an effective filing date on or after March 16, 2013.

The detailed rules for this process may be seen in the February 14, 2013 Federal Register notice.

This is sort of like asking whether the PCT application contains new matter relative to the priority application.  But the need to check the box is not triggered by the presence of new matter alone.  Only if the new matter got claimed will it be necessary to check the box.

It is not enough to look to see what the claims are in the US national phase case at the time of US national phase entry (perhaps due to a preliminary amendment).  If some claim in the international phase (before the filing of the preliminary amendment for US national phase entry) happened to have claimed the new matter, then the fact that that claim was ever in the case will be enough to trigger the need to check the box.

I am grateful to the nice member of the PCT listserv who reminded me about all of this.

I’ll be giving a webinar about all of this some time in the next month or so.  If you want to make sure you hear about the webinar when it gets scheduled, be sure to subscribe to this blog using the box in the upper right corner of the screen.


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