Correction of Patents

February 13, 2023

Correction of Patents

Overview
1. Vehicles for correcting patents
  1. Certificate of Correction (C of C): for clerical errors, typos, etc.
    1. PTO’s mistake
    2. Applicant’s mistake
  2. Reissue application
    1. Broadening claim scope: within 2 years from issue
    2. Narrowing claim scope: during the term of the patent
  3. Reexamination of patent
    1. Ex parte reexamination: between applicant and PTO
    2. Inter partes reexamination: involves third party
2. Common characteristics
  1. Only available to correct good faith errors: cannot correct mistakes due to inequitable conduct
  2. Cannot insert new matter into the patent
  3. Available for correcting all types of patents: utility, design, and plant
Certificate of Correction (C of C)
1. General aspects:
  1. Only for non-substantive errors, such as clerical errors, typos, etc.
  2. No requirement for diligence: may correct even after the patent expires
  3. Corrective effect is retroactive
2. C of C to correct PTO’s error
  1. Any error correctable (e.g., failure to correctly print claims, specifications, priority claims, drawings, etc.)
  2. No fee
3. C of C to correct applicant’s error
  1. Error must be minor and clerical or typographical in nature (i.e., not requiring substantive examination)
  2. Fee required: no small entity discount!
4. C of C to correct inventorship
  1. May correct: misjoinder, non-joinder and totally erroneous inventorship
  2. Requirements
    1. Statement from each added inventor that the error was without deception on his part
    2. Statement from remaining inventors agreeing (or not disagreeing) to the change
    3. Statement from all assignees agreeing to the change
    4. Assignment from newly named inventors (if applicable)
  3. Fee required: no small entity discount!
Reissue application
1. Reissue: overview
  1. Reissue may correct any defects that make the patent inoperative or invalid, including (comprehensive corrective power):
    1. Too narrow or too broad claim scope
    2. Inventorship
    3. Specification
    4. Drawing
    5. Domestic or foreign priority claim
    6. May even be used to provoke interference (i.e., adding new claims to exclude latecomers from making similar claims)
  2. Patentee assumes risk when filing reissue application:
    1. Original patent is no longer presumed to be valid during the reissue examination.
    2. Reissue application is subject to full examination (i.e., examined like an original application).
    3. Originally allowed claims may be rejected on any ground, including ground withdrawn by the examiner during the original prosecution.
    4. Application file is open to the public (since the original patent already issued).
  3. Patentee still retains some rights:
    1. Original patent’s f/d controls re prior art.
    2. Examiner cannot require restriction involving only the claims in the original patent, but may require restriction involving newly added claims.
    3. Applicant may file divisionals to divide original claims, but is subject to double-patenting rejections.
  4. Expedited examination: reissue examination is automatically made special.
2. Reissue narrowing claim scope
  1. Can be filed by assignee(s) of the entire interest, even without permission from inventors
  2. Can be filed at any time during the term of the patent
3. Reissue broadening claim scope
  1. Requires consent of all parties – assignee(s) and inventor(s)
  2. Must be filed within 2 years from original issue
    1. Once filed within 2 years, subsequent broadening is allowed even beyond 2 years
  3. May claim subject matter originally disclosed but not claimed, but always: no new matter
  4. May not claim subject matter that was subject to restriction requirement during original prosecution but was not elected, i.e., failure to timely file a divisional application then cannot be corrected by reissue now (reason: the patentee already had his chance to file a divisional application but chose not to do so) MPEP1412.01
  5. Recapture estoppel: may not claim identical subject matter surrendered (canceled) during original prosecution MPEP1412.02
    1. May capture claims of intermediate scope (e.g., canceled claim has elements ABC, issued claim has elements ABCDE, reissued claim may have elements ABCD)
  6. Adding domestic or foreign priority claim is not broadening.
4. Reissue application: parts and form
  1. Upon reissue application, parts must include:
    1. Reissue oath or declaration MPEP1414
      1. States that the patent is wholly or partially inoperative
      2. States at least one error as the basis of reissue (e.g., misunderstanding of the law or of the scope of the prior art)
      3. States that the error was made without deceptive intention
    2. Body (form) of the reissue application
      1. Copy of printed patent printed only on one side, with new claims starting with the next number above the original highest number
      2. Amendments made in the same manner as during original prosecution
      3. Separate pages showing the current status of each claim, along with the support for any claim change
    3. Other documents
      1. Offer to surrender the original patent: surrender takes effect upon reissue; during examination the original patent is still in effect
      2. Assent of the assignee
      3. Copies of drawings from the printed patent (may not simply as PTO to transfer from the original patent file)
      4. If necessary: IDS, priority claims
    4. Fee: small entity discount available!
  2. Important points re reissue application
    1. Foreign priority claim of the original patent does not carry forward! Applicant must request such foreign priority during reissue application.
    2. As reissue prosecution concludes, before allowance, supplemental oath is required if (important: oath and error have to match) MPEP1414.01
      1. Prior reissue oath failed to state an error corrected during reissue prosecution
      2. Prior reissue oath improperly stated an error
      3. Errors stated in the prior reissue oath are no longer being corrected
Reexamination of patent
1. Reexamination: overview
  1. Two stages of reexamination
    1. Substantial new question of patentability
    2. The actual examination
  2. Two types of reexamination
    1. Ex parte reexamination: may be requested by the patentee or a third party, but third party participation is limited to the first stage
    2. Inter partes reexamination: permits a third party to participate in all stages, including subsequent Board and court appeals
  3. Claims may only be narrowed but not broadened; may amend specification but no new matter.
  4. Expired patent may be reexamined without amending any claims (reason: infringement suit may last beyond patent expiration).
  5. No withdrawal permitted once reexamination is requested.
  6. No continuation from the reexamined patent is permitted.
  7. Prosecution file is open to public.
  8. viii.Reexamination proceeding is conducted with special dispatch (i.e., not in queue).
2. Ex parte reexamination
  1. Request for ex parte reexamination
    1. Who may request: any party
    2. Time limit: period of enforceability = up to 6 years after patent term expiration MPEP2211
    3. Basis of request: patents, publications and admissions only!
      1. Most common: prior art (less common: double patenting)
      2. May also base on §102(f) derivation or §102(g) prior making, as long as such prior art is disclosed in patent, publication or admission. MPEP2217
    4. Request for ex parte reexamination: parts
      1. Copy of the complete patent in double column format (including any disclaimer, C of C, previous reexamination certificate, etc.)
      2. Comparison of prior art to claims under question
      3. Fee
      4. English translation if necessary
    5. Request for ex parte reexamination: procedure
      1. If filed by a third party
        Identity of real party in interest need not be disclosed (i.e., third party may hire an agent to request reexamination)
        Must serve on the patentee
        Patentee may not respond prior to PTO’s grant of reexamination
      2. If filed by the patentee: may include proposed amendment
  2. Ex parte reexamination: pre-reexamination
    1. PTO’s examination of request for reexamination
      1. PTO will decide in 3 months
      2. Dispositive issue considered by PTO:
        Whether the request raises a substantial new question of patentability
        Not whether the patent’s claim is prima facie invalid (that was already decided by PTO in the prior examination)
      3. Determination is made by an examiner other than the original examiner (except in unusual circumstances)
    2. Upon PTO granting the request for reexamination:
      1. Patentee may file (optional) preliminary statement/amendment within 2 months from the mailing date of the PTO order granting the request.
      2. Only in response to patentee’s preliminary statement/amendment, the third party may reply
        Within 2 months from the serving date of the patentee’s statement/amendment, without time extension
        May include citation of further prior art in response to the patentee’s statement/amendment
    3. Third party requester has no further right to participate in the ex parte reexamination proceeding; even judicial review is not available to third party here!
  3. Ex parte reexamination: actual reexamination
    1. Reexamination is conducted with urgency: with special dispatch; time extension is rare and is only allowed with showing of good cause according to Rule 550(c)
    2. Rejection is based only on patents, publications and admissions: matters such as public use, for sale, lack of utility, incorrect inventorship, fraud, etc. are merely noted by the examiner (prompting patentee to file a future reissue application)
    3. No presumption of claim validity (just like reissue examination); claims are given the broadest reasonable interpretation (just like a regular examination)
    4. Examiner may use prior art cited in the request, and also use prior art in:
      1. Cited in the patentee’s preliminary statement/amendment and/or the third party requester’s reply
      2. Record from earlier examination
      3. Discovered by the examiner
      4. Cited by the patentee in IDS under duty to disclose
      5. Cited by additional third party requesters
    5. No oath required
    6. Original claims are not examined for compliance with §112 or §132 (notice of rejection; reexamination), but new and amended claims are.
  4. Office action
  5. Interviews
    1. No interview on merits prior to the first OA (just like a regular examination)
    2. Interview summary: must always be filed by the patentee, within 30 days from interview
    3. Third party may not participate. (Reason: third party participation stops before the actual ex parte reexamination)
  6. Appeals
    1. Conducted with special dispatch
    2. Third party may not appeal or be involved in any other way.
3. Inter partes reexamination
  1. Request for inter partes reexamination: by third party only!
    1. Same as ex parte, and
    2. Real party identity
    3. Certification providing:
      1. Requester will not file another reexamination request before the current reexamination is concluded
      2. The current request is not on an issue that the requester lost (or could have raised) in a prior inter partes reexamination or court action; basically, no second bite at the apple.
  2. Inter partes reexamination: pre-reexamination
    1. Patentee’s response
    2. Third party requester’s response
  3. Inter parties reexamination: actual reexamination procedure limits back-and-forth responses between patentee and third party
    1. PTO issues OA on merits
    2. Patentee’s response to OA on merits
      1. No amendments to enlarge claim scope
      2. No interviews
      3. 50 page limit, excluding amendments, appendices of claims and prior art references
    3. Third party requester’s response to patentee’s response: only one response allowed.
      1. Within 30 days from service of patentee’s response; no time extension
      2. Comments limited to issues raised by OA or patentee’s response
      3. Citation of additional prior art allowed only when necessary
      4. 50 page limit, excluding reference materials
    4. PTO issues right of appeal notice: similar to final OA
      1. One month for either party to appeal to Board
  4. Inter partes appeal
    1. Appellant’s brief: within 2 months, 30 page limit, no time extension
    2. Respondent’s (cross appeal) brief: one month, 15 page limit, no time extension (reason: expedite!)
    3. Examiner’s answer
    4. Appellant’s rebuttal to examiner’s answer: one month, no time extension
    5. Oral hearing
  5. Board decision
    1. May affirm, reverse, or remand
    2. Board can raise new ground of rejection
    3. If Board sides with the third party, the patentee has one month (extendable) to:
      1. Submit amendment or showing of facts (third party then has one month to reply), or
      2. Request rehearing
  6. Court review of inter partes reexamination
    1. May be sought by either party
    2. May only file in the Federal Circuit
4. Comparison between ex parte reexamination and inter partes reexamination
  1. Similarities between ex parte reexamination and inter partes reexamination
    1. Same basis for requesting reexamination: patents, publications and admissions
    2. Same determination to grant reexamination: substantial new question of patentability
    3. No continuing application may be filed
    4. No restriction by the examiner (pertaining to the reexamined claims)
  2. Inter partes reexamination is different from ex parte reexamination in the following:
    1. Available only for patents filed on or after 1999-11-29 (AIPA)
    2. Can only be filed by third party!
    3. Real requester must be identified.
    4. If request is denied by PTO, third party may petition to Director within one month.
    5. If request is granted, first OA on merits is ordinarily mailed with the order to grant request.
    6. Third party may appeal to Board and participate afterwards.
    7. No interviews
    8. Fee is about 4 times that of the ex parte
    9. After reexamination closes, third party is estopped from challenging any claim validity on any basis that could have been raised during reexamination (reason: no second bite at the apple).
5. Reexamination certificate
  1. Indicates states of all claims
  2. Always issues at the conclusion of the proceedings

Correction of Patents

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