In some instances an application may be filed containing an error. For example, an application may be filed with an inventorship error.
35 U.S.C. 116 Inventors.
- (c) CORRECTION OF ERRORS IN APPLICATION.— Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in an application, the Director may permit the application to be amended accordingly, under such terms as he prescribes.
For applications filed on or after September 16, 2012, an inventorship error may be corrected without disclosure of the circumstances of the error. Previously under pre-AIA 35 U.S.C. 116, applicants had to specify that such changes “arose without any deceptive intent”. Even though the “deceptive intent” language has been removed from the law, applicants still have a duty to exercise candor and good faith in all dealings with the Office. When an error is discovered, applicant should take steps to ensure that the error is corrected as soon as possible. See MPEP § 602.01et seq. and MPEP § 602.09 for additional information.
In instances when an applicant submits other information (i.e., errors other than inventorship) to the Office that is incorrectly or incompletely characterized, applicant should:
expressly advise the PTO of [the misrepresentation’s] existence, stating specifically wherein it resides. . . . It does not suffice that one knowing of misrepresentations in an application or in its prosecution merely supplies the examiner with accurate facts without calling his attention to the untrue or misleading assertions sought to be overcome, leaving him to formulate his own conclusions.
See Intellect Wireless v. HTC Corp., 732 F.3d 1339, 1343 (Fed. Cir. 2013).
In order to assure that any correction is fully considered by the examiner, applicants should file the correction “openly”, as in filing the correction under separate cover so that the examiner will not be left to determine what is correct. Id. See also Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2d 1556, 1572, 220 USPQ 289, 301 (Fed. Cir. 1983). 37 CFR 1.4(c) requires that each distinct subject must be contained in a separate paper to avoid confusion and delay in responding.