1480 Certificates of Correction — Office Mistake
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This law discusses how the PTO will handle mistakes that were their fault.
Whenever a mistake in a patent, incurred through the fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office, the Director may issue a certificate of correction stating the fact and nature of such mistake, under seal, without charge, to be recorded in the records of patents. A printed copy thereof shall be attached to each printed copy of the patent, and such certificate shall be considered as part of the original patent. Every such patent, together with such 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. The Director may issue a corrected patent without charge in lieu of and with like effect as a certificate of correction.
(a)
(1) The Director may issue a certificate of correction pursuant to 35 U.S.C. 254 to correct a mistake in a patent, incurred through the fault of the Office, which mistake is clearly disclosed in the records of the Office:
(i) At the request of the patentee or the patentee’s assignee;
(ii) Acting sua sponte for mistakes that the Office discovers; or
(iii) Acting on information about a mistake supplied by a third party.(2)
(i) There is no obligation on the Office to act on or respond to a submission of information or request to issue a certificate of correction by a third party under paragraph (a)(1)(iii) of this section.
(ii) Papers submitted by a third party under this section will not be made of record in the file that they relate to nor be retained by the Office.(3) 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.
(4) The Office will not issue a certificate of correction under this section without first notifying the patentee (including any assignee of record) at the correspondence address of record as specified in § 1.33(a) and affording the patentee or an assignee an opportunity to be heard.
(b) If the nature of the mistake on the part of the Office is such that a certificate of correction is deemed inappropriate in form, the Director may issue a corrected patent in lieu thereof as a more appropriate form for certificate of correction, without expense to the patentee.
Reasons for Certificates of correction --
Certificates of correction are used for minor mistakes (like typos) in issued patents on the part of the Patent Office or the applicant
A Certificate of correction may be used in order to correct an issued patent as long as the filing was made without deceptive intent in the following situations:
- to correct inventorship
- a correction for failure to claim priority
When to use a Certificate of correction:
- through error and without deceptive intent, there is a failure to make reference to a prior copending application according to 37 C.F.R. 1.78 (claiming benefit of earlier filing date and cross-references to other applications - see Chapter 200), and the failure does not otherwise affect what is claimed, but the prior copending application is referenced in a record of the application
- through error and without deceptive intent, a prior copending application is correctly identified elsewhere in the application file, and a petition under 37 C.F.R. 1.324 and fees are filed
- through error and without deceptive intent, the inventor’s name is omitted from an issued patent, and a petition under 37 C.F.R. 1.324 and fees are filed and a petition granted
A preferred embodiment materially affecting the scope of a patent omitted in an application is not minor enough to be corrected by a Certificate of correction, since it affects the scope and meaning of claims.
Third parties do not have standing to demand that the Office issue or refuse to issue a certificate of correction.
The Office will not issue a certificate of correction under 37 C.F.R. § 1.322 without first notifying the patentee (including any assignee of record) at the correspondence address of record as specified in § 1.33(a) and affording the patentee or an assignee an opportunity to be heard. Additionally, the Office has the discretion to decline to issue a certificate of correction even though an Office mistake exists if the Office mistakes are of a nature that the meaning intended is obvious from the context.
A request for a certificate of correction to correct a mistake in a patent incurred through the fault of the Office may relate to any issued patent including those involved in interference.
The Commissioner may issue a certificate of correction to correct a mistake in a patent, incurred through the fault of the Office acting sua sponte, after first notifying the patentee, for mistakes that the Office discovers.
- In addition, the Commissioner may issue a certificate of correction to correct a mistake in a patent, incurred through the fault of the Office, acting sua sponte for mistakes that the Office discovers or acting on information about a mistake supplied by a third party.
Papers submitted by a third party under this section will not be made of record in the file that they relate to nor be retained by the Office.
