1481 Certificates of Correction – Applicant’s Mistake [R-11.2013]
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 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.