Correcting Errors in a Patent: Certificate of Correction Versus Reissue Application

Errors in an issued patent undermine its enforceability, create ambiguity, or even affect its validity. Patent rules provide mechanisms to correct these errors. The two primary options are the Certificate of Correction and the Reissue Application. Each serves a distinct purpose and is suited to specific types of errors.

When to Use a Certificate of Correction?

A Certificate of Correction is designed for non-substantive errors (e.g., typographical) —mistakes that do not alter the scope or meaning of the claims. These errors must meet the following criteria:

1. Errors Made by the USPTO
   If the USPTO introduced an error during the prosecution or issuance process, such as a typo or formatting mistake, the patent owner can request a correction without a fee. For example, the patent office mislabeled the claim dependencies or input the incorrect bibliographic data. These typographical errors can be fixed through a Certificate of Correction.
2. Errors Made by the Applicant
   Applicant errors can also be corrected, but only if the error was made in good faith and without deceptive intent. These include typographical mistakes, incorrect inventor names, claim of priority, or clerical errors in the specification or claims.

When You Cannot Use a Certificate of Correction?

Certificates of Correction cannot be used for substantive errors—those that affect the scope of the claims or introduce new matter. If the correction alters the scope of patent protection under the patent, a reissue application needs to be filed instead of a certificate of correction.

How to File a Request for a Certificate of Correction?

Filing for a Certificate of Correction is a straightforward process. Here’s how to do it:

1. Complete the Certificate of Correction Form
   • Use Form PTO/SB/44
     • See MPEP 1481 when the error is an applicant error.
     • See MPEP 1480 when the error is an Office Mistake.
2. Submit Your Request to the USPTO
   The USPTO will review the request and, if approved, issue a Certificate of Correction.

When to Use a Reissue Application?

A Reissue Application is required for substantive changes to a patent. Substantive errors are those that:

• Render the patent at least partially inoperative or invalid.
• Require changes to the scope of the claims (e.g., broadening or narrowing the claims).
• Involve correcting significant omissions or inaccuracies in the specification or drawings.

Key Points About Reissue Applications

1. Broadening Scope: Reissue applications to broaden claim scope of patent protection must be filed within two years of the patent’s grant date.
2. Second Examination: The USPTO re-examines the patent to ensure that the changes comply with patent laws.  Do you really want that?  The USPTO can reduce the scope of patent protection if they believe that the claims are anticipated by the prior art.  They might reexamine the application and reject some of the claims you didn’t want them to reject.  You have to accept this possibility when you file a reissue application.
3. Time and Cost: Reissue applications are more time-consuming and costly compared to Certificates of Correction.

How to File a Request for a Certificate of Correction?

To file a reissue application, follow these steps:

1. Identify the Error: You must admit that there is an error in your patent.  Sounds counter intuitive but you need to state the error.  As such, a reissue application is serious in many ways.  The error must have also occurred without deceptive intent.
2. Prepare the Reissue Application:
   • File a reissue declaration or oath specifying the error and confirming it was made in good faith.
   • Submit the corrected claims, specification, or drawings with clear markings indicating the changes.
   • Include a copy of the original patent and any disclaimers, assignments, or prior art disclosures.
3. Pay the Filing Fee: The reissue application requires payment of the applicable USPTO fee.
4. Submit the Application: File the application electronically via the USPTO’s Patent Center.

If the reissue involves broadening the claims, it must be filed within two years of the original patent issuance. Narrowing corrections can be filed at any time during the term of the patent

Implications of Errors in a Patent

Errors in a patent can have serious consequences:

• Ambiguity in Claims: Mistakes in claim language can create uncertainty about the scope of protection.
• Limited Enforceability: Substantive errors may render the patent unenforceable until corrected.
• Damages: For errors corrected through a reissue application, damages for infringement may only be recoverable after the correction takes effect.

Prompt correction of errors is essential to protect the enforceability and value of your patent. Failure to address errors can weaken your position in licensing negotiations or litigation.

Encouraging Patent Owners to Review Their Patents

Patent owners should review their issued patents for potential errors as soon as they receive the grant. Even minor errors can have significant implications when trying to collect damages. If you’re unsure about mistakes in your patent, consider hiring a patent attorney to review your patent.

Conclusion

Errors in patents can have far-reaching implications for enforceability, licensing, and litigation. Choosing the right correction mechanism—Certificate of Correction for non-substantive errors or Reissue Application for substantive changes—needs to be selected correctly so that you can get your patent corrected.

If you’ve identified an error in your patent or suspect one might exist, consult a qualified patent attorney to determine the best course of action. Your intellectual property is too valuable to leave to chance.  Give me a call at (949) 433-0900 or schedule a consultation.