Yet another AIA trap for the unwary

We are all accustomed by now to the very important trick of “aging the preliminary amendment”.  When we file a transition application (an application filed on or after March 16, 2013 which is tied to some application filed before that date) the usual mistake is to file the preliminary amendment on filing day.  The reason it is usually a mistake is that years later in litigation, the infringer will howl that the preliminary amendment added new matter, and that that new matter had been claimed, and that the “new” law of patentability should have been applied to the case rather than the “old” law of patentability that was actually applied to the case (because you refrained from “checking the box” in the ADS).

So the malpractice-avoiding strategy for many fact patterns is the by now very familiar practice of “aging the preliminary amendment”.  We file the transition case, and then wait for midnight to pass in Virginia.  Only then do we file the PA.  Later the Examiner will determine whether or not the PA contains new matter.  If the Examiner enters the amendment, this counts as an express determination by the Examiner that the PA must not have contained new matter.  This denies the infringer, in litigation, any opportunity to howl about the case having supposedly been examined using the “wrong” law of patentability.

Which gets us to the latest trap for the unwary.

The latest trap for the unwary is that the USPTO now apparently has a policy of not telling you about it when the USPTO decides that the PA is somehow supposedly defective.

An example will illustrate what I am talking about.

We filed a transition application, and aged the preliminary amendment.  Some weeks later the OPAP (Office of Patent Application Processing) mailed the official Filing Receipt.  At which point we ran our Filing Receipt checklist, reported the Filing Receipt, and cleared our dockets for the case.  (We then set our usual six-month status check that we we set in any open file that does not have any other docket set.)

Quite by chance, we later happened to notice in IFW that some nameless USPTO person had reindexed our PA with a document description of “non-responsive amendment – not entered” instead of the original document description of “preliminary amendment”.

Had we not noticed this event, the case would have worked its way up the examination queue and would eventually have gotten examined.  But with the wrong claims!

We looked at the offending PA.  Nothing in IFW explains what real or imagined defect was floating around in the PA, that somehow justified tampering with the document description.  I finally arrived at a stab-in-the-dark guess that maybe the USPTO person had found fault with the strikethroughs and underscores in the one claim that had been amended in the PA.  I fiddled with the strikethroughs and underscores and filed the PA all over again.  Now we have set another docket to see if another nameless person at the USPTO decides to tamper with the document description for this second PA.

The practice tip is simple.  When you file an aged PA, docket a couple of months (I guess!) to check to see whether some nameless person at the USPTO decides to change the document description to “non-responsive amendment – not entered”.

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