USPTO addresses asymmetry in the correction of check-the-box mistakes

Ever since March 16, 2013 there has been a profound asymmetry in the manner in which check-the-box mistakes could be corrected by the practitioner.  For more than three years now, it has been easy (according to USPTO’s rules) to correct a mistake if it happens in one direction, and impossible to correct the mistake if it happens in the opposite direction.  USPTO has now announced a policy that is intended to reduce this profound asymmetry.

It will be recalled that the America Invents Act establishes one body of law (the “new law”) of patentability for certain newer (“post-AIA” or “new law”) patent applications, and leaves in place an older body of law (the “old law”) of patentability for older (“pre-AIA” or “old law”) patent applications.    The AIA says that the way that the Examiner should know whether to apply the new law or the old law in a particular case is by taking into account whether the application contains, or has ever contained, at least one claim for which the effective filing date is on or after March 16, 2013.

It will be recalled that the Act itself is silent on the pesky question of who exactly is supposed to figure out whether or not the application contains, or has ever contained, at least one claim for which the effective filing date is on or after March 16, 2013.  I would have thought that the correct person to be saddled with this task would be the Examiner.  Examiners, after all, are good at figuring out whether a claim is or is not supported by a particular filing date.  They do this every time they examine a CIP application.

But the USPTO, in its implementation rulemaking for this aspect of the AIA, successfully shifted this burden to the applicant (that is, to the patent practitioner).  For certain types of patent applications (called “transition” applications) the practitioner is required, by rule, to check a box (or to refrain from checking a box) in the Application Data Sheet to indicate whether the application does or does not contain, or contained or ever contained, a patent claim the effective filing date of which is on or after March 16, 2013.

And to this day, practitioners are saddled with this “check the box” burden.

The burden presents itself if, for example, the practitioner is filing a patent application now that claims a domestic benefit from a parent case that is an “old law” case.

But the burden also presents itself any time a practitioner touches a case in which a “check the box” mistake might have been made in the past.

Which squarely presents the question of what, exactly, the practitioner should do if the practitioner discovers, to his or her horror, that a “check the box” mistake was previously made in a particular application.  One supposes that there ought to be some procedure by which the practitioner could inform the USPTO of the mistake.  In such a case, the Examiner would then need to go back and repeat any examination activity that had already been carried out, to see whether either (a) something that had previously been patentable has now become unpatentable or (b) something that had previously been unpatentable has now become patentable.

In June of 2015 I posted a blog article “How to correct a check-the-box mistake?”  I noted that according to the February 14, 2013 Final Rules, if the box must be checked, the box must be checked by no later than the 4-and-16 date (four months from the filing date or sixteen months from the priority date or domestic benefit date, whichever is later).  The rules do not permit any extension of time for this required task.

In contrast, if the mistake is that the box was checked and should not have been checked, the USPTO has said this rescission of a checked box could be carried out at any time.  Nowhere has USPTO said, for example, that such a rescission needs to be done by the 4-and-16 date (or by any other date).

In my blog article in June of 2015 I identified this profound asymmetry and I said that USPTO needed to correct it.  Shortly after the blog article, a particular nice person at USPTO said that USPTO would correct this Real Soon Now.  In the year and a half that has passed since then, I gently reminded this nice person several times that this profound assymmetry remained outstanding.

Today this nice person drew my attention to an FAQ that was posted today to the USPTO web site.   Here is what it says:

Late statements of FITF applicability under §§ 1.55 and 1.78. If an applicant files a transition application that would be subject to the requirement set forth in 37 CFR 1.55(k), 1.78(a)(6) or 1.78(d)(6) for a First Inventor to File (FITF) framework applicability statement (statement), will the USPTO accept a late statement (e.g., not filed within the later of 4 months from the actual filing date of the nonprovisional application or 16 months from the filing date of the prior-filed application) indicating that the application should be examined under the FITF framework? (Question FITF3180)

An applicant should file a statement in an AIA FITF transition application as soon as applicant becomes aware that the statement is needed in order to make sure that the application will be examined under the appropriate FITF statutory framework.

An applicant may file, prior to payment of the issue fee, a late statement that was unintentionally not timely filed, without filing a petition. If the late statement is being filed on or after the date of payment of the issue fee, applicant must withdraw the application from issue, 37 CFR 1.313, and file an RCE in order for the late statement to be considered, and the application to then be examined under the correct statutory framework.

As with any FITF applicability statement submitted after the filing of the application, an Application Data Sheet (ADS), 37 CFR 1.76, should not be used to make the statement as this would cause delay in processing the statement. Instead, the late statement should be submitted as a separate paper and identified with the document description “Make/Rescind statement under 37 CFR 1.55/1.78,” and the document code “R.55.78.STMT” when filing the statement via the EFS-Web.

The acknowledgement of a statement by the USPTO on a filing receipt does not automatically mean that the application was examined under the appropriate FITF statutory framework. Applicant should check the AIA (FITF) status information that is shown on the latest Office action, or in the Patent Application Information Retrieval (PAIR) system to determine under what statutory framework the application was examined.

Let’s talk through what this FAQ means.

First, it’s clear from Rule 78 that the practitioner is supposed to check the box (if the practitioner is going to check the box) by the 4-and-16 date.  Nothing about this FAQ changes that Rule.

The FAQ says, however, that a checking of the box by the practitioner may be done after the 4-and-16 date so long as the delay is unintentional.  In other words, the FAQ purports to be a waiver or Rule 78 insofar as the FAQ says you can actually check the box after the 4-and-16 date and the box-checking might work.

The FAQ addresses only obliquely, however, the question of whether the Examiner is or is not required to do anything about the delayed checking of the box.

This raises the specter of a new category of “walking corpse” patent, by which I mean an issued US patent that would collapse the moment that it is litigated, due to some defect therein.  The concern is that the case might be a case in which the Examiner applied the old law, and only after the Examiner determined what was and was not patentable did the practitioner get around to a delayed checking of the box.  The patent might issue without the Examiner having given any consideration of the possibility that some subject matter previously determined to have been patentable has become unpatentable (due to the checking of the box) or vice versa.  At litigation time, the accused infringer would presumably jump up and down pointing to things that had been allowed by the Examiner that would supposedly not have been allowed had the Examiner only been timely told of the box-checking.

The FAQ ducks this category of problem, other than (a) to point out that if the Issue Fee has been paid, the practitioner will have to get the case withdrawn from issue and an RCE will have to be filed, and (b) to point out that the only way you can really be sure whether the Examiner applied the correct law (old or new) is by looking at language in an Office Action or by rooting around in Private PAIR for clues about the law that had been applied by the Examiner.

Clearly if you manage to get your belated box-checking document into the file before the first Office Action (despite its being after the 4-and-16 date), you are probably safe.  The Examiner will probably employ the new law to decide what is patentable, and will probably say so in the first office action.  The practitioner can then relax.  (This assumes that the delay in checking the box was unintentional, as the FAQ requires it to be.)

Even if you failed to correct the failure-to-check-the-box problem until after the first office action, you might still get lucky.  The Examiner might be willing to take the newly checked box into account, by which we mean the Examiner might be willing to go back and redo the examination that had been done according to the old law, this time applying the new law, and might be willing to commit in writing to having done so.  (This commitment by the Examiner to having applied the new law might be communicated by the Examiner in an Office Action, or in an interview summary, or in a Notice of Allowance.)

But you might not get lucky.  The Examiner might decline to go back and examine the application all over again under the new law (which involves discarding some or all of the hard work previously carried out under the old law).  In such a case, the practitioner might indeed have to file an RCE or CPA or continuation to get the Examiner to examine the case under the new law.

USPTO’s selected mechanism for waiving the 4-and-16 requirement in Rule 78, namely by means of an FAQ that might disappear at any time, seems poorly chosen.  It seems to me that USPTO should commit to this waiver in a way that is not at risk of disappearing later, for example by publication in the Official Gazette or by means of an express amendment to the Rule.

Another problem with this FAQ is that to the extent that it purports to waive this provision of Rule 78, it only does so in the special case where the delay in checking the box was “unintentional.”  The FAQ does not come out and say that the practitioner is required to expressly state that the delay was unintentional.  This suggests to me that the practitioner does not need to expressly state this along with the filing of the check-the-box document.  Instead it would be saved for litigation time for the accused infringer to inquire into whether there is some question as to whether the delay in the checking of the box was indeed unintentional.

In the (hopefully rare) case where the direction of failure was the direction of failing to check the box, and where the mistake was not corrected by the 4-and-16 date, and where the mistake cannot be said to have been unintentional, then the legacy practice seems to be the only safe practice.  By legacy practice we mean filing a continuation and carefully getting the box checked within four months of the filing date of the continuation.

It is good news that the USPTO has at least done something to attempt to correct the profound asymmetry in the correction of check-the-box mistakes.  One hopes the USPTO will commit to this waiver of a provision of Rule 78 in an OG notice (rather than a mere ephemeral FAQ on a web page), and then practitioners will be able to proceed with less apprehension.

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