1481.03 Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits [R-07.2022]

Created On
byChhabra Law Firm

I. CORRECTION TO PERFECT CLAIM FOR 35 U.S.C. 119 (a)-(d) AND (f) BENEFITS

See MPEP § 216.01 for a discussion of when 35 U.S.C. 119(a)–(d) and (f) benefits can be perfected by certificate of correction.

II. CORRECTION AS TO 35 U.S.C. 120 AND 35 U.S.C. 119(e) BENEFITS

37 CFR 1.78  Claiming benefit of earlier filing date and cross-references to other applications.

  • (a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. An applicant in a nonprovisional application, other than for a design patent, or an international application designating the United States may claim the benefit of one or more prior-filed provisional applications under the conditions set forth in 35 U.S.C. 119(e) and this section.
    • (1) The nonprovisional application or international application designating the United States must be:
      • (i) Filed not later than twelve months after the date on which the provisional application was filed, subject to paragraph (b) of this section (a subsequent application); or
      • (ii) Entitled to claim the benefit under 35 U.S.C. 120, 121, or 365(c) of a subsequent application that was filed within the period set forth in paragraph (a)(1)(i) of this section.
    • (2) Each prior-filed provisional application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed provisional application must be entitled to a filing date as set forth in § 1.53(c), and the basic filing fee set forth in § 1.16(d) must have been paid for such provisional application within the time period set forth in § 1.53(g).
    • (3) Any nonprovisional application or international application designating the United States that claims the benefit of one or more prior-filed provisional applications must contain, or be amended to contain, a reference to each such prior-filed provisional application, identifying it by the provisional application number (consisting of series code and serial number). If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)).
    • (4) The reference required by paragraph (a)(3) of this section must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed provisional application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior-filed provisional application. Except as provided in paragraph (c) of this section, failure to timely submit the reference is considered a waiver of any benefit under 35 U.S.C. 119(e) of the prior-filed provisional application. The time periods in this paragraph do not apply if the later-filed application is:
      • (i) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
      • (ii) An international application filed under 35 U.S.C. 363 before November 29, 2000.
    • (5) If the prior-filed provisional application was filed in a language other than English and both an English-language translation of the prior-filed provisional application and a statement that the translation is accurate were not previously filed in the prior-filed provisional application, the applicant will be notified and given a period of time within which to file, in the prior-filed provisional application, the translation and the statement. If the notice is mailed in a pending nonprovisional application, a timely reply to such a notice must include the filing in the nonprovisional application of either a confirmation that the translation and statement were filed in the provisional application, or an application data sheet eliminating the reference under paragraph (a)(3) of this section to the prior-filed provisional application, or the nonprovisional application will be abandoned. The translation and statement may be filed in the provisional application, even if the provisional application has become abandoned.
    • (6) If a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a provisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed provisional application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the nonprovisional application. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
  • (b) Delayed filing of the subsequent nonprovisional application or international application designating the United States. If the subsequent nonprovisional application or international application designating the United States has a filing date which is after the expiration of the twelve-month period set forth in paragraph (a)(1)(i) of this section but within two months from the expiration of the period set forth in paragraph (a)(1)(i) of this section, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent nonprovisional application or international application designating the United States within the period set forth in paragraph (a)(1)(i) of this section was unintentional.
    • (1) A petition to restore the benefit of a provisional application under this paragraph filed on or after May 13, 2015, must be filed in the subsequent application, and any petition to restore the benefit of a provisional application under this paragraph must include:
      • (i) The reference required by 35 U.S.C. 119(e) to the prior-filed provisional application in an application data sheet (§ 1.76(b)(5)) identifying it by provisional application number (consisting of series code and serial number), unless previously submitted;
      • (ii) The petition fee as set forth in § 1.17(m); and
      • (iii) A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period set forth in paragraph (a)(1)(i) of this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
    • (2) The restoration of the right of priority under PCT Rule 26bis.3 to a provisional application does not affect the requirement to include the reference required by paragraph (a)(3) of this section to the provisional application in a national stage application under 35 U.S.C. 371 within the time period provided by paragraph (a)(4) of this section to avoid the benefit claim being considered waived.
  • (c) Delayed claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. If the reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section is presented in an application after the time period provided by paragraph (a)(4) of this section, the claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application may be accepted if the reference identifying the prior-filed application by provisional application number was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application must be accompanied by:
    • (1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section to the prior-filed provisional application, unless previously submitted;
    • (2) The fee set forth in § 1.17(m); and
    • (3) A statement that the entire delay between the date the benefit claim was due under paragraph (a)(4) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
  • (d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
    • (1) Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed application must either be:
      • (i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States;
      • (ii) An international design application entitled to a filing date in accordance with § 1.1023 and designating the United States; or
      • (iii) A nonprovisional application under 35 U.S.C. 111(a) that is entitled to a filing date as set forth in § 1.53(b) or (d) for which the basic filing fee set forth in § 1.16 has been paid within the pendency of the application.
    • (2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
    • (3)
      • (i) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section must be submitted during the pendency of the later-filed application.
      • (ii) If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior-filed application. The time periods in this paragraph do not apply if the later-filed application is:
        • (A) An application for a design patent;
        • (B) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
        • (C) An international application filed under 35 U.S.C. 363 before November 29, 2000.
      • (iii) Except as provided in paragraph (e) of this section, failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is considered a waiver of any benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application.
    • (4) The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior-filed application. The identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.
    • (5) Cross-references to other related applications may be made when appropriate (see § 1.14), but cross-references to applications for which a benefit is not claimed under title 35, United States Code, must not be included in an application data sheet (§ 1.76(b)(5)).
    • (6) If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims the benefit of the filing date of a nonprovisional application or an international application designating the United States filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the later-filed application. An applicant is not required to provide such a statement if either:

      • (i) The application claims the benefit of a nonprovisional application in which a statement under § 1.55(k), paragraph (a)(6) of this section, or this paragraph that the 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 has been filed; or
      • (ii) The applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the later filed application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
    • (7) Where benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application or an international design application which designates but did not originate in the United States, the Office may require a certified copy of such application together with an English translation thereof if filed in another language.
  • (e) Delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. If the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is presented after the time period provided by paragraph (d)(3) of this section, the claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States may be accepted if the reference required by paragraph (d)(2) of this section was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be accompanied by:
    • (1) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section to the prior-filed application, unless previously submitted;
    • (2) The petition fee set forth in § 1.17(m); and
    • (3) A statement that the entire delay between the date the benefit claim was due under paragraph (d)(3) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
  • (f) Applications containing patentably indistinct claims. Where two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
  • (g) Applications or patents under reexamination naming different inventors and containing patentably indistinct claims. If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same person and contain patentably indistinct claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the Office may require the applicant or assignee to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on such date, and if not, indicate which named inventor is the prior inventor, as applicable. Even if the claimed inventions were commonly owned, or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the patentably indistinct claims may be rejected under the doctrine of double patenting in view of such commonly owned or assigned applications or patents under reexamination.
  • (h) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (a)(3) and (d)(2) of this section that any specific reference to a prior-filed application be presented in an application data sheet (§ 1.76), this requirement in paragraph (a)(3) and (d)(2) of this section will be satisfied by the presentation of such specific reference in the first sentence(s) of the specification following the title in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012. The provisions of this paragraph do not apply to any specific reference submitted for a petition under paragraph (b) of this section to restore the benefit of a provisional application.
  • (i) Petitions required in international applications. If a petition under paragraph (b), (c), or (e) of this section is required in an international application that was not filed with the United States Receiving Office and is not a nonprovisional application, then such petition may be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the international application and will be treated as having been filed in the international application.
  • (j) Benefit under 35 U.S.C. 386(c). Benefit under 35 U.S.C. 386(c) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
  • (k) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).

Title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA) amended 35 U.S.C. 119(e)(1) to provide that:

No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this subsection.

Specifically, 35 U.S.C. 119(e)(1) is effective for all patents whenever granted and no longer requires that the amendment containing the specific reference to the earlier-filed provisional application be submitted during the pendency of the application. Thus, the prior prohibition on granting certificates of correction to add or correct a claim for the benefit of a prior provisional application no longer applies. A certificate of correction to add or correct a claim for the benefit of a prior provisional application under 35 U.S.C. 119(e) may now be available under certain conditions. See subsection A. entitled “Conditions for Certificate of Correction” below. In addition, effective May 13, 2015, 37 CFR 1.78(d)(3) was revised to make the procedures under 37 CFR 1.78(e) to accept an unintentionally delayed benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) applicable to design applications, and thus, accords applicants in design applications the same remedy that was only previously available to applicants in utility and plant applications. 37 CFR 1.78(d)(3)(i) provides that the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) must be submitted during the pendency of the later-filed application. For design applications, this time period is the only applicable time period for when the required reference must be submitted because the time period set forth in 37 CFR 1.78(d)(3)(ii) (i.e., four months from the filing date of the later-filed application or sixteen months from the filing date of the prior-filed application) does not apply to an application for a design patent. If the required reference to the prior-filed application is not submitted during the pendency of the later-filed design application, then a petition to accept an unintentionally delayed benefit claim under 37 CFR 1.78(e) may be filed. See 37 CFR 1.78(d)(3)(iii). Thus, a petition under 37 CFR 1.78(e) may be filed along with a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 in a design patent if the required reference to the prior-filed application was not submitted during the pendency of the later-filed design application.

Under certain conditions as specified below a certificate of correction can be used, with respect to a benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c), to correct:

  • (A) the failure to make reference to a prior copending nonprovisional application, international application designating the United States, or international design application designating the United States pursuant to 37 CFR 1.78(d)(2);
  • (B) an incorrect reference to a prior copending nonprovisional application, international application designating the United States, or international design application designating the United States pursuant to 37 CFR 1.78(d)(2);
  • (C) the failure to make reference to a prior provisional application pursuant to 37 CFR 1.78(a)(3); or
  • (D) an incorrect reference to a prior provisional application pursuant to 37 CFR 1.78(a)(3).

A. Conditions for Certificate of Correction

  • 1. Where a benefit claim based upon 35 U.S.C. 120 to a national application is to be asserted or corrected in a patent via a certificate of correction, the following conditions must be satisfied:
    • (A) all requirements set forth in 37 CFR 1.78(d)(1) must have been met in the application which became the patent to be corrected;
    • (B) it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 211et seq.); and
    • (C) a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78(e) must be filed, including the petition fee as set forth in 37 CFR 1.17(m). See MPEP § 211.04for a discussion of the requirements for the petition.
  • 2. Where a benefit claim based upon 35 U.S.C. 120 and 365(c) to an international application, or 35 U.S.C. 120 and 386(c) to an international design application, is to be asserted or corrected in a patent via a certificate of correction, the following conditions must be satisfied:
    • (A) all requirements set forth in 37 CFR 1.78(d)(1) must have been met in the application which became the patent to be corrected;
    • (B) it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 211et seq.);
    • (C) the patentee must submit together with the request for the certificate, copies of documentation showing designation of states and any other information needed to make it clear from the record that the 35 U.S.C. 120 priority is appropriate (see MPEP § 211et seq. as to the requirements for 35 U.S.C. 120 priority based on an international application or an international design application); and
    • (D) a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78(e) must be filed, including the petition fee as set forth in 37 CFR 1.17(m). See MPEP § 211.04for a discussion of the requirements for the petition.

    Benefit under 35 U.S.C. 386(c) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon. See MPEP § 211.01(d).

    Where a benefit claim based upon 35 U.S.C. 120, 121, 365(c), or 386(c) is timely submitted, a petition under 37 CFR 1.78(e) is not required for correcting the benefit claim by changing the relationship of the applications (e.g., changing from “continuation” or “divisional” to “continuation-in-part” or from “continuation-in-part” to “continuation” or “divisional”) whether filed during the pendency of the later-filed application or after patent grant. See MPEP § 211.03. However, a change in the relationship may require comparing the disclosures of the applications which would require further examination and thus such a change would not be appropriate via a certificate of correction after patent grant. In addition, there is significance to the designation of the relationship as “continuation,” “divisional,” or “continuation-in-part.” For example, the safe harbor of 35 U.S.C. 121 only protects divisional applications, not continuation applications or continuation-in-part applications. See Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1362, 86 USPQ2d 1001, 1007-08 (Fed. Cir. 2008) and Amgen v. Hoffman-La Roche, 580 F.3d 1340, 1352-1354, 92 USPQ2d 1289, 1298-1300 (Fed. Cir. 2009). Changing the relationship to or from a “divisional” has the potential to impact the applicability of the safe harbor provision or a nonstatutory double patenting rejection. Note that a patentee cannot obtain the safe harbor protection of 35 U.S.C. 121 against nonstatutory double patenting by amending a patent that issued from a continuation-in-part application to recite only subject matter disclosed in the parent application and changing the relationship to a divisional of the parent application. See In re Janssen Biotech, Inc., 880 F.3d 1315, 125 USPQ2d 1525, 1529 (Fed. Cir. 2018)( “[A] patent owner cannot retroactively bring its challenged patent within the scope of the safe-harbor provision by amendment in a reexamination proceeding.”); G.D. Searle LLC v. Lupin Pharm., Inc., 790 F.3d 1349, 1355, 115 USPQ2d 1326, 1330 (Fed. Cir. 2015)(“Simply deleting that new matter from the reissue patent does not retroactively alter the nature of the [CIP] application.”).

  • 3. Where a benefit claim based upon 35 U.S.C. 119(e) to a prior provisional application is to be asserted or corrected in a patent via a certificate of correction, the following conditions must be satisfied:
    • A. all requirements set forth in 37 CFR 1.78(a)(1) and (a)(2) must have been met in the application which became the patent to be corrected;
    • B. it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 211et seq.); and
    • C. a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78(c) must be filed, including the petition fee as set forth in 37 CFR 1.17(m). See MPEP § 211.04for a discussion of the requirements for the petition.

Except in certain situations, if all the above-stated conditions for benefit claims discussed in A.1-3 are satisfied, a certificate of correction can generally be used to amend the patent to make reference to a prior application, or to correct an incorrect reference to the prior application.

In situations where a petition under 37 CFR 1.78 is filed with a request for a certificate of correction under 35 U.S.C. 255 in an issued patent, the petition should not be granted where grant of the petition would require further examination. The following situations are examples of when further examination would be required: (1) where the grant of the petition would cause the patent to be subject to a different statutory framework, e.g., the addition of a benefit claim to a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA; (2) where the grant of the petition would result in the claim(s) in the patent having a later effective filing date and thus making available more potential prior art; and (3) where the grant of the petition would alter the continuity chain in a way that may impact patentability, e.g., the altered chain would require evaluation of whether the continuity of disclosure requirement is satisfied.

Furthermore, if the grant of the petition under 37 CFR 1.78, which is filed with a request for a certificate of correction under 35 U.S.C. 255, would have the appearance of extending the patent term, the petition should not be granted. For example, in an application that claims both domestic benefit and foreign priority, a change to a later filing date in the earliest application for which domestic benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) could have the appearance of extending the patent term, even though the effective filing date for the claimed invention would not change because the foreign priority date would not change. See 35 U.S.C. 100(i)(1). This is because a foreign priority date is taken into account in determining the effective filing date for a claimed invention under the first inventor to file (FITF) provisions of the AIA, but the foreign priority date is not taken into account in determining the term of a patent. The maximum term of the original patent is fixed at the time the patent is granted, subject to any adjustments to the number of days of extension or adjustment. In addition, 35 U.S.C. 255 states that the patent, together with the certificate of correction, shall have the same effect as if the patent originally issued in that corrected form. Therefore, a petition under 37 CFR 1.78 with a certificate of correction under 35 U.S.C. 255 should not be granted where grant of the petition would have the appearance of extending the patent term.

Exemplary situations where a petition under 37 CFR 1.78 with a certificate of correction may be appropriate:

  • (A) Adding or correcting a claim to a prior application having a filing date before March 16, 2013 to a patent that was examined (as indicated on the notice of allowance or a later Office communication such as a supplemental Notice of Allowance) under the first to invent provisions of pre-AIA law.
  • (B) Adding or correcting a claim to a prior application having a filing date before March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first inventor to file provisions of the AIA and where the 37 CFR 1.55/1.78 statement (see MPEP § 210, subsection III) is filed concurrently with the petition (since the presence of the statement would not result in a switch in the statutory framework).
  • (C) Adding a claim to a prior application having a filing date on or after March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first to invent provisions of pre-AIA law.
  • (D) Adding or correcting a claim to a prior application having a filing date on or after March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first inventor to file provisions of the AIA.

However, as discussed above, a petition under 37 CFR 1.78 with a certificate of correction under 35 U.S.C. 255 should not be granted where further examination would be required or the grant of the petition would have the appearance of extending the patent term.

Exemplary situations where a certificate of correction under 35 U.S.C. 255 may not be appropriate:

  • (A) Adding or correcting a claim to a prior application having a filing date before March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first inventor to file provisions of the AIA and where the 37 CFR 1.55/1.78 statement is not present.
  • (B) Correcting a claim to a prior application having a filing date before March 16, 2013 to a claim to a prior application having a filing date on or after March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first to invent provisions of pre-AIA law.
  • (C) Correcting a claim to a prior application that would result in a later effective filing date for a claimed invention (even if it would not result in a change to the statutory framework under which the application was examined).
  • (D) Correcting a claim to a prior application that would have the appearance of extending the patent term (even if it would not result in a later effective filing date for a claimed invention or a change to the statutory framework under which the application was examined).

If any of the above-stated conditions is not satisfied or if the correction sought would require further examination, the filing of a reissue application (see MPEP § 1401 – § 1460) may be appropriate to pursue the desired correction of the patent for benefit claims under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c). It should be noted that a certificate of correction under 35 U.S.C. 255 cannot be used to remove a benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) because further examination would be required.

See MPEP § 216.01 for a discussion of when a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be perfected by certificate of correction.