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