1481 Certificates of Correction – Applicant’s Mistake [R-07.2022]

1481 Certificates of Correction – Applicant’s Mistake [R-07.2022]

35 U.S.C. 255   Certificate of correction of applicant’s mistake.

Whenever a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the Patent and Trademark Office, appears in a patent and a showing has been made that such mistake occurred in good faith, the Director may, upon payment of the required fee, issue a certificate of correction, if the correction does not involve such changes in the patent as would constitute new matter or would require reexamination. Such patent, together with the certificate, shall have the same effect and operation in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such corrected form.

37 CFR 1.323  Certificate of correction of applicant’s mistake.

The Office may issue a certificate of correction under the conditions specified in 35 U.S.C. 255 at the request of the patentee or the patentee’s assignee, upon payment of the fee set forth in § 1.20(a). If the request relates to a patent involved in an interference or trial before the Patent Trial and Appeal Board, the request must comply with the requirements of this section and be accompanied by a motion under § 41.121(a)(2), § 41.121(a)(3) or § 42.20 of this title.

37 CFR 1.323 relates to the issuance of certificates of correction for the correction of errors which were not the fault of the Office. Mistakes in a patent which are not correctable by certificate of correction may be correctable via filing a reissue application (see MPEP § 1401§ 1460). See Novo Industries, L.P. v. Micro Molds Corporation, 350 F.3d 1348, 69 USPQ2d 1128 (Fed. Cir. 2003) (The Federal Circuit stated that when Congress in 1952 defined USPTO authority to make corrections with prospective effect, it did not deny correction authority to the district courts. A court, however, can correct only if “(1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation…” ).

In re Arnott, 19 USPQ2d 1049, 1052 (Comm’r Pat. 1991) specifies the criteria of 35 U.S.C. 255 (for a certificate of correction) as follows:

Two separate statutory requirements must be met before a Certificate of Correction for an applicant’s mistake may issue. The first statutory requirement concerns the nature, i.e., type, of the mistake for which a correction is sought. The mistake must be:

(1) of a clerical nature,

(2) of a typographical nature, or

(3) a mistake of minor character.

The second statutory requirement concerns the nature of the proposed correction. The correction must not involve changes which would:

(1) constitute new matter or

(2) require reexamination.

If the above criteria are not satisfied, then a certificate of correction for an applicant’s mistake will not issue, and reissue must be employed as the vehicle to “correct” the patent. Usually, any mistake affecting claim scope must be corrected by reissue.

A clerical or typographical mistake, except in unusual circumstances, is manifest from the contents of the file of the patent sought to be corrected. In re Arnott, 19 USPQ2d 1049, 1053 (Comm’r Pat. 1991). For example, obvious and immediately apparent mistakes, such as typographical errors in which the correct word is immediately known by its context, are errors that are manifest from the patent file contents. On the other hand, if evidence not in the patent file is needed to establish the existence of the error, then the error is likely not manifest from the contents of the file sought to be corrected.

A clerical or typographical mistake in the benefit or foreign priority claim is typically not an error correctable by a certificate of correction and generally requires a petition under 37 CFR 1.78(e) or 37 CFR 1.55(e), respectively. See MPEP § 1481.03 for more information on correcting a benefit claim and MPEP § 216.01 for more information on correcting a foreign priority claim.

A mistake is not considered to be of the “minor” character required for the issuance of a certificate of correction if the requested change would materially affect the scope or meaning of the patent. See also MPEP § 1412.04 as to correction of inventorship via certificate of correction or reissue.

“A mistake that, if corrected, would broaden the scope of a claim must thus be viewed as highly important and thus cannot be a mistake of ’minor character.’ Accordingly, based on the plain meaning of the statutory language, we interpret ’a mistake of . . . minor character’ to exclude mistakes that broaden a claim.” Superior Fireplace Co. v. The Majestic Products Co., 270 F.3d 1358, 1375, 60 USPQ2d 1668, 1681 (Fed. Cir. 2001). Filing a request for a certificate of correction for a broadened claim to correct an error by applicant of failing to properly present that broader claim would, if granted, be issuing a patent on a claim that had never been examined and is improper under certificate of correction practice. The filing of a reissue application may, in some instances, be appropriate to add a broadened claim to a patent. See MPEP § 1402. Failure by applicant to present a claim is an error in claim drafting, which is not correctable by a certificate of correction. In re Patent No 6550701, 2006 WL 4494426 (Comm’r Pat. 2006).

The fee for providing a correction of applicant’s mistake, other than inventorship, is set forth in 37 CFR 1.20(a). The fee for correction of inventorship in a patent is set forth in 37 CFR 1.20(b).