How to Correct Simple Mistakes in an Issued Patent - Certificates of Correction. Episode 74

Reissue Applications vs. Certificates of Correction

In the last episode, I discussed what to do if you made a significant mistake in your patent after it was issued, such as claims that are too broad or too narrow. These issues require a reissue application, which involves a complete re-examination of your patent and is not guaranteed to be granted.

In this episode, I will cover how to correct simpler mistakes. While nothing is guaranteed, obvious mistakes—such as typos—are relatively easy to fix. However, there are two types of mistakes: those made by the Patent Office and those made by the applicant.

If the Patent Office made the mistake, they can issue a certificate of correction on their own, or you can request a correction. Even a third party can request a correction. If the Patent Office is at fault, there is no charge, and when you view the corrected patent, a page at the end will detail the correction.

How to Request a Certificate of Correction

To request a correction, you must complete Form PTO-SB-44. This form requires details such as the patent number, application number, issue date, and inventor names. You must also specify the correction by indicating the column and line number, or if the error is in a claim, the claim and line number.

For example, you might request: "In claim 5, replace the word 'higher' with 'above,'" or "In the claim, replace the word 'region' with 'layer.'" However, just because you made a clerical error doesn’t mean it will automatically be approved. The correction must be obvious to a person having ordinary skill in the art.

Limits of a Certificate of Correction

There was a case where the inventors originally claimed a product with "rear walls" (plural) but later realized they meant "rear wall" (singular). The courts ruled that this could not be corrected with a certificate of correction because someone reading the specification might genuinely believe that multiple rear walls were required. This means competitors could design around the claim by making a product with just one rear wall.

If a correction is not approved through a certificate of correction, the alternative is filing a reissue application, but that process is more complex and requires a full re-examination.

Fees and Processing Time

If the mistake was made by the Patent Office, there is no charge for a certificate of correction. However, if the mistake was made by the applicant, the current fee (2019) is $150.

You can file your request electronically, and it typically takes one to two months to process. However, I recently reviewed Patent No. 9,014,524, which took almost three years to receive a certificate of correction. While 95% of corrections are processed within a year, if your request is taking too long, it’s worth calling the Patent Office to check on the status.

Even if your patent contains mistakes, it remains enforceable. However, accuracy is important. When someone looks up your patent, they will see the original version with errors, but a page at the end will display the correction as submitted in Form PTO-SB-44. The correction itself is not integrated into the original patent text; instead, it appears as an addendum.

Legal Basis for a Certificate of Correction

The guidelines for requesting a certificate of correction are found in Manual of Patent Examining Procedure (MPEP) Sections 1480 and 1481. Three types of errors qualify for correction:

1. Clerical errors

2. Typographical errors

3. Mistakes of minor character

However, corrections cannot involve:

1. New matter

2. Changes requiring re-examination

If a requested change affects the scope of the invention, the request will be denied, and a reissue application must be filed instead.

Common Uses for a Certificate of Correction

Most certificates of correction address typographical or clerical errors. For example, if you accidentally wrote "higher"when you clearly meant "lower" based on the surrounding context, this can be corrected—provided it’s an obvious mistake. However, you cannot use a certificate of correction to subtly alter the scope of your patent.

Another common use is correcting the assignee’s name. The assignee is listed when the patent issues, and you want to ensure the correct entity is named.

Additionally, inventor names can sometimes be incorrect. Suppose you originally listed five inventors, but during prosecution, certain claims were allowed that were solely invented by four of them. The fifth inventor, who had no role in those claims, should not be listed. You can correct this with a certificate of correction.

If adding or removing an inventor, additional steps are required. Statements must be submitted by:

• Each person being added

• Each person already named on the patent

  
  

These statements must confirm that the change is accurate and that there is no disagreement. If a dispute arises—such as an individual claiming they should have been named as an inventor but the others disagree—this cannot be resolved with a certificate of correction. Instead, a reissue application must be filed, which can lead to litigation.

Name Changes on a Patent

If an inventor changes their name due to marriage or other reasons, this cannot be corrected through a certificate of correction. The original name will remain on the issued patent because it is not considered an error.

Frequency of Patent Corrections

According to recent statistics, 20,000 to 30,000 patents are corrected each year, meaning that while corrections are common, they occur in less than 10% of issued patents.

If you are considering requesting a certificate of correction, it is best to consult a patent attorney. You don’t want to risk making an incorrect statement that could impact the validity or enforceability of your patent.

I’m Adam Diament, and until next time, keep on inventing!