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1130    Republication and Correction of Patent Application Publications [R-08.2012]

37 C.F.R. 1.221   Voluntary publication or republication of patent application publication

  • (a) Any request for publication of an application filed before, but pending on, November 29, 2000, and any request for republication of an application previously published under § 1.211, must include a copy of the application in compliance with the Office electronic filing system requirements and be accompanied by the publication fee set forth in § 1.18(d) and the processing fee set forth in § 1.17(i). If the request does not comply with the requirements of this paragraph or the copy of the application does not comply with the Office electronic filing system requirements, the Office will not publish the application and will refund the publication fee.
  • (b) The Office will grant a request for a corrected or revised patent application publication other than as provided in paragraph (a) of this section only when the Office makes a material mistake which is apparent from Office records. Any request for a corrected or revised patent application publication other than as provided in paragraph (a) of this section must be filed within two months from the date of the patent application publication. This period is not extendable.

If an applicant wishes to correct errors in a patent application publication, or republish the application with an amended specification (including amended claims) and/or replacement drawings, applicant may file a request for republication pursuant to37 CFR 1.221(a). The request for republication must include:

  • (A) a copy of the application in compliance with the Office Electronic Filing System (EFS) requirements, e.g., set forth in the EFS-Web Legal Framework (for more information on EFS see MPEP § 1730 and the USPTO web site, www.uspto.gov);
  • (B) the publication fee set forth in 37 CFR 1.18(d); and
  • (C) the processing fee set forth in 37 CFR 1.17(i).

If the applicant submits a request that does not meet the EFS requirements, the request will be dismissed. If the fees are not paid, the USPTO will send the applicant a letter requiring the fees and republication of the application will be delayed. While there is no set time limit for requesting republication, the application must still be pending.

If the application is recognized by the Office as abandoned, or has issued as a patent, the application may be removed from the publication process and not republished, even if the Office accepted the request.

  Correction of Material Mistake Made by the Office

If the Office made a material mistake in a patent application publication that is apparent from the Office records and applicant wishes to correct the material mistake, applicant may file a request for corrected publication pursuant to 37 CFR 1.221(b). Prior to submitting a request for a corrected publication under 37 CFR 1.221(b), applicant must check applicant’s records (or PAIR) to determine that the application papers submitted to the Office did not contain the alleged material error made by the Office. If applicant submitted a specification that includes illegible text, the Office will not grant a request for corrected publication under 37 CFR 1.221(b) based on errors arising from misinterpretation of such text.

The request for a corrected publication under 37 CFR 1.221(b) must:

  • (A) be filed within two months from the date of the patent application publication; and
  • (B) identify the Office’s material mistake in the publication.

The two-month time period is not extendable. A request for corrected publication should include a listing of the alleged material errors made by the Office, marked up copies of the relevant pages of the publication and an indication of where in the specification as filed the relevant text appears. If the period has expired or the mistake is caused by the applicants, applicants may correct the mistakes by filing a request for republication under 37 CFR 1.221(a), and should not file a request for corrected publication under 37 CFR 1.221(b).

A.   Material Mistake

The Office will grant a request for a corrected publication under 37 CFR 1.221(b) only when the Office makes a material mistake which is apparent from Office records. A material mistake means a mistake that affects the public’s ability to appreciate the technical disclosure of the patent application publication or determine the scope of the provisional rights that an applicant may seek to enforce upon issuance of a patent. An error in the claims, the (effective) filing date of the application, or a serious error in the written description or drawings that is necessary to support the claims may be a material error. The following are examples of material mistake:

  • (A) The publication did not include claims that were included in the originally-filed specification and not canceled by a preliminary amendment.
  • (B) The publication did not include a part of the specification that provides support for the published claims.
  • (C) The publication did not include any of the drawings originally filed.
  • (D) For applications filed on or after September 16, 2012, the publication did not include the benefit claim to a prior-filed nonprovisional application where the specific reference was timely submitted in an application data sheet (ADS). For applications filed before September 16, 2012, the publication did not include the benefit claim to a prior-filed nonprovisional application where the specific reference was timely submitted in the first sentences of the specification or ADS.

B.   Non-Material Mistake

Applicants should not file requests for corrected publication that include no material error made by the Office. Errors in the correspondence address, the assignment information or missing assignment information, minor typographical errors or missing section headings are not material mistakes. A failure to include an amendment is not an Office error. See MPEP § 1121. For example, applicants should not file a request for a corrected publication under 37 CFR 1.221(b) for the following situations:

  • (A) The publication did not include assignment information.
  • (B) The publication shows the wrong assignee or the name of the assignee is misspelled.
  • (C) The publication did not include a benefit or priority claim to a prior application. For example, where either the claim was not timely filed or the reference to the prior application under 37 CFR 1.78 was not properly submitted in the first sentence of the specification or in an application data sheet (ADS) (for applications filed on or after September 16, 2012) or the reference to the prior application under 37 CFR 1.78 was not properly submitted in the first sentences of the specification or in an application data sheet (ADS) (for applications filed before September 16, 2012). See MPEP §§ 211et seq.
  • (D) The publication did not include claims or changes submitted in an amendment.
  • (E) The publication includes typographical errors that do not affect the interpretation of the published claims.

A request for corrected publication under 37 CFR 1.221(b) may result in a patent term adjustment reduction where the Office made only non-material errors (especially those listed above).

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Last Modified: 03/27/2014 10:10:32