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1481 Certificates of Correction - Applicant’s Mistake [R-11.2013]

35 U.S.C. 255   Certificate of correction of applicant’s mistake.

Whenever a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the Patent and Trademark Office, appears in a patent and a showing has been made that such mistake occurred in good faith, the Director may, upon payment of the required fee, issue a certificate of correction, if the correction does not involve such changes in the patent as would constitute new matter or would require reexamination. Such patent, together with the certificate, shall have the same effect and operation in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such corrected form.

37 CFR 1.323  Certificate of correction of applicant’s mistake.

The Office may issue a certificate of correction under the conditions specified in 35 U.S.C. 255 at the request of the patentee or the patentee’s assignee, upon payment of the fee set forth in § 1.20(a). If the request relates to a patent involved in an interference or trial before the Patent Trial and Appeal Board, the request must comply with the requirements of this section and be accompanied by a motion under § 41.121(a)(2), § 41.121(a)(3) or § 42.20 of this title.

37 CFR 1.323 relates to the issuance of certificates of correction for the correction of errors which were not the fault of the Office. Mistakes in a patent which are not correctable by certificate of correction may be correctable via filing a reissue application (see MPEP § 1401 - § 1460). See Novo Industries, L.P. v. Micro Molds Corporation, 350 F.3d 1348, 69 USPQ2d 1128 (Fed. Cir. 2003) (The Federal Circuit stated that when Congress in 1952 defined USPTO authority to make corrections with prospective effect, it did not deny correction authority to the district courts. A court, however, can correct only if "(1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation..." ).

In re Arnott, 19 USPQ2d 1049, 1052 (Comm’r Pat. 1991) specifies the criteria of 35 U.S.C. 255 (for a certificate of correction) as follows:

Two separate statutory requirements must be met before a Certificate of Correction for an applicant’s mistake may issue. The first statutory requirement concerns the nature, i.e., type, of the mistake for which a correction is sought. The mistake must be:

(1) of a clerical nature,

(2) of a typographical nature, or

(3) a mistake of minor character.

The second statutory requirement concerns the nature of the proposed correction. The correction must not involve changes which would:

(1) constitute new matter or

(2) require reexamination.

If the above criteria are not satisfied, then a certificate of correction for an applicant’s mistake will not issue, and reissue must be employed as the vehicle to “correct” the patent. Usually, any mistake affecting claim scope must be corrected by reissue.

A mistake is not considered to be of the “minor” character required for the issuance of a certificate of correction if the requested change would materially affect the scope or meaning of the patent. See also MPEP § 1412.04 as to correction of inventorship via certificate of correction or reissue.

The fee for providing a correction of applicant’s mistake, other than inventorship, is set forth in 37 CFR 1.20(a). The fee for correction of inventorship in a patent is set forth in 37 CFR 1.20(b).

1481.01 Correction of Assignees’ Names [R-08.2012]

The Fee(s) Transmittal Form portion (PTOL-85B) of the Notice of Allowance provides a space (item 3) for assignment data which should be completed in order to comply with 37 CFR 3.81. Unless an assignee’s name and address are identified in the appropriate space for specifying the assignee, (i.e., item 3 of the Fee(s) Transmittal Form PTOL-85B), the patent will issue to the applicant. Assignment data printed on the patent will be based solely on the information so supplied.

Any request for the issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee must:

  • (A) state that the assignment was submitted for recordation as set forth in 37 CFR 3.11 before issuance of the patent;
  • (B) include a request for a certificate of correction under 37 CFR 1.323 along with the fee set forth in 37 CFR 1.20(a); and
  • (C) include the processing fee set forth in 37 CFR 1.17(i).

See 37 CFR 3.81(b).

1481.02 Correction of Named Inventor [R-08.2017]

35 U.S.C. 256 permits the Director to issue a certificate correcting the inventors named in a patent; 37 CFR 1.324 provides the criteria for requests to correct inventorship in a patent. Pre-AIA 35 U.S.C. 256 requires that any error to be corrected must have been made “without deceptive intention.” Effective September 16, 2012, Public Law 112-29, sec. 20, 125 Stat. 284 (Leahy-Smith America Invents Act (AIA)), amended 35 U.S.C. 256 to eliminate the “without deceptive intention” clause. See subsection I., below, for the requirements of a petition filed on or after September 16, 2012 to correct inventorship in a patent, and subsection II., below, for the requirements of such a petition filed before September 16, 2012.

While a request under 37 CFR 1.48 is appropriate to correct inventorship in a nonprovisional application, a petition under 37 CFR 1.324 is the appropriate vehicle to correct inventorship in a patent. If a request under 37 CFR 1.48 is inadvertently filed in a patent, the request may be treated as a petition under 37 CFR 1.324, and if it is grantable, form paragraph 10.14 set forth in subsection III., below should be used.

Similarly, if a request under 37 CFR 1.48(a), (b), or (c) is filed in a pending application but not acted upon until after the application becomes a patent, the request may be treated as a petition under 37 CFR 1.324, and if it is grantable, form paragraph 10.14 set forth below should be used.

The statutory basis for correction of inventorship in a patent under 37 CFR 1.324 is 35 U.S.C. 256. It is important to recognize that 35 U.S.C. 256 is stricter than 35 U.S.C. 116, the statutory basis for corrections of inventorship in applications under 37 CFR 1.48. 35 U.S.C. 256 requires “on application of all the parties and assignees,” while 35 U.S.C. 116 does not have the same requirement. Correction of inventorship in a patent under 37 CFR 1.324 requires petition of all the parties, i.e., originally named inventors and assignees, in accordance with statute (35 U.S.C. 256) and thus the requirement cannot be waived.

Where applicant’s typographical error in an inventor’s name is recognized after the patent issues, a certificate of correction under 37 CFR 1.323, the fee set forth in 37 CFR 1.20(a), a petition under 37 CFR 1.182, and the petition fee set forth in 37 CFR 1.17(f) must be filed to request correction of the typographical error in the inventor’s name.

Where an inventor changes their name after the patent issues, a certificate of correction cannot be filed to effect the name change in the patent. An inventor name change after a patent issues is neither a “mistake of a clerical or typographical nature, or of minor character” in accordance with 35 U.S.C. 255, nor a mistake that “is clearly disclosed by the records of the Office” in accordance with 35 U.S.C. 254. Additionally, an inventor name change after the patent issues is not a correction of inventorship under 35 U.S.C. 256.

I. REQUEST FILED ON OR AFTER SEPTEMBER 16, 2012, TO CORRECT NAMED INVENTOR

[Editor Note: See subsection II. below, for requests filed before September 16, 2012.]

35 U.S.C. 256   Correction of named inventor.

  • (a) CORRECION.- Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.
  • (b) PATENT VALID IF ERROR CORRECTED.- The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.

37 CFR 1.324  Correction of inventorship in patent, pursuant to 35 U.S.C. 256.

  • (a) Whenever through error a person is named in an issued patent as the inventor, or an inventor is not named in an issued patent, the Director, pursuant to 35 U.S.C. 256, may, on application of all the parties and assignees, or on order of a court before which such matter is called in question, issue a certificate naming only the actual inventor or inventors.
  • (b) Any request to correct inventorship of a patent pursuant to paragraph (a) of this section must be accompanied by:
    • (1) A statement from each person who is being added as an inventor and each person who is currently named as an inventor either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested change;
    • (2) A statement from all assignees of the parties submitting a statement under paragraph (b)(1) of this section agreeing to the change of inventorship in the patent, which statement must comply with the requirements of § 3.73(c) of this chapter; and
    • (3) The fee set forth in § 1.20(b).
  • (c) For correction of inventorship in an application, see § 1.48.
  • (d) In an interference under part 41, subpart D, of this title, a request for correction of inventorship in a patent must be in the form of a motion under § 41.121(a)(2) of this title. In a contested case under part 42, subpart D, of this title, a request for correction of inventorship in a patent must be in the form of a motion under § 42.22 of this title. The motion under § 41.121(a)(2) or § 42.22 of this title must comply with the requirements of this section.

In requesting the Office to effectuate a court order correcting inventorship in a patent pursuant to 35 U.S.C. 256, a copy of the court order and a certificate of correction under 37 CFR 1.323 should be submitted to the Certificates of Correction Branch.

A petition filed on or after September 16, 2012 to correct the inventorship in a patent must be accompanied by all of the following:

  • (1) A statement from each person who is being added as an inventor and each person who is currently named as an inventor. Each inventor statement must either agree to the change of inventorship or state that the inventor has no disagreement in regard to the requested change. See 37 CFR 1.324(b)(1).
  • (2) A statement is required from the assignee(s) of the parties submitting a statement under 37 CFR 1.324(b)(1) agreeing to the change of inventorship in the patent, which statement must comply with the requirements of 37 CFR 3.73(c). See 37 CFR 1.324(b)(2). See MPEP § 325 as to the requirements of a statement under 37 CFR 3.73(c). A statement is required by each entity having an ownership interest in the patent.
  • (3) The fee set forth in 37 CFR 1.20(b).

If an inventor is not available, or refuses, to submit a statement, the assignee of the patent may wish to consider filing a reissue application to correct inventorship, because the inventor’s statement is not required for a non-broadening reissue application to correct inventorship. See MPEP § 1412.04.

For correction of inventorship in a patent in an interference under 37 CFR part 41, subpart D, 37 CFR 1.324(d) provides that a request for correction of inventorship must be in the form of a motion under 37 CFR 41.121(a)(2). For correction of inventorship in a contested case under 37 CFR part 42, subpart D, 37 CFR 1.324(d) provides that a request for correction of inventorship in a patent must be in the form of a motion under 37 CFR 42.22. 37 CFR 1.324(d) further provides that the motion made under 37 CFR 41.121(a)(2) or 42.22 must comply with the requirements of 37 CFR 1.324.

II. REQUEST FILED BEFORE SEPTEMBER 16, 2012, TO CORRECT NAMED INVENTOR

[Editor Note: See subsection I. above, for requests filed on or after September 16, 2012.]

Pre-AIA 35 U.S.C. 256  Correction of named inventor

Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.

The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.

Pre-AIA 37 CFR 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256.

  • (a) Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his or her part, the Director, pursuant to 35 U.S.C. 256, may, on application of all the parties and assignees, or on order of a court before which such matter is called in question, issue a certificate naming only the actual inventor or inventors. A petition to correct inventorship of a patent involved in an interference must comply with the requirements of this section and must be accompanied by a motion under § 41.121(a)(2) or § 41.121(a)(3) of this title.
  • (b) Any request to correct inventorship of a patent pursuant to paragraph (a) of this section must be accompanied by:
    • (1) Where one or more persons are being added, a statement from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on his or her part;
    • (2) A statement from the current named inventors who have not submitted a statement under paragraph (b)(1) of this section either agreeing to the change of inventorship or stating that they have no disagreement in regard to the requested change;
    • (3) A statement from all assignees of the parties submitting a statement under paragraphs (b)(1) and (b)(2) of this section agreeing to the change of inventorship in the patent, which statement must comply with the requirements of § 3.73(b) of this chapter; and
  • (c) For correction of inventorship in an application, see §§ 1.48 and 1.497.
  • (d) In a contested case before the Board of Patent Appeals and Interferences under part 41, subpart D, of this title, a request for correction of a patent must be in the form of a motion under § 41.121(a)(2) or § 41.121(a)(3) of this title.

In requesting the Office to effectuate a court order correcting inventorship in a patent pursuant to 35 U.S.C. 256, a copy of the court order and a certificate of correction under 37 CFR 1.323 must be submitted to the Certificates of Correction Branch. A petition filed before September 16, 2012 to correct the inventorship in a patent must comply with the requirements of pre-AIA 37 CFR 1.324, and must include the statements and fee required by pre-AIA 37 CFR 1.324(b).

Under pre-AIA 37 CFR 1.324(b)(1), a statement is required from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on their part. In order to satisfy this, a statement such as the following is sufficient:

“The inventorship error of failing to include John Smith as an inventor of the patent occurred without any deceptive intention on the part of John Smith.”

Nothing more is required. The examiner will determine only whether the statement contains the required language; the examiner will not make any comment as to whether or not it appears that there was in fact deceptive intention (see MPEP § 2012).

Under pre-AIA 37 CFR 1.324(b)(2), all current inventors who did not submit a statement under pre-AIA 37 CFR 1.324(b)(1) must submit a statement either agreeing to the change of inventorship, or stating that they have no disagreement with regard to the requested change. “Current inventors” include the inventor(s) being retained as such and the inventor(s) to be deleted. These current inventors need not make a statement as to whether the inventorship error occurred without deceptive intention. If an inventor is not available, or refuses, to submit a statement, the assignee of the patent may wish to consider filing a reissue application to correct inventorship, because the inventor’s statement is not required for a non-broadening reissue application to correct inventorship. See MPEP § 1412.04.

Under pre-AIA 37 CFR 1.324(b)(2), a statement is required from the assignee(s) of the patent agreeing to the change of inventorship in the patent. The assignee statement agreeing to the change of inventorship must be accompanied by a proper statement under pre-AIA 37 CFR 3.73(b) establishing ownership, unless such a proper statement is already in the file. See MPEP § 324 as to the requirements of a statement under pre-AIA 37 CFR 3.73(b).

III. PETITION UNDER 37 CFR 1.324

Correction of inventorship requests under 37 CFR 1.324 should be directed to the Supervisory Patent Examiner (SPE) whose unit handles the subject matter of the patent. The SPE may use Form PTOL-360 to respond to the request under 37 CFR 1.324. Alternatively, form paragraphs 10.13 through 10.18 may be used.

¶ 10.13 Petition Under 37 CFR 1.324, Granted

In re Patent No. [1] :Issue Date: [2] : DECISION Appl. No.: [3] : GRANTINGFiled: [4] : PETITIONFor: [5] : 37 CFR 1.324

This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.

The petition is granted.

The patented file is being forwarded to Certificates of Correction Branch for issuance of a certificate naming only the actual inventor or inventors.

_______________________

[7]

Supervisory Patent Examiner,

Art Unit [8],

Technology Center [9]

[10]

Examiner Note:

  • 1. Petitions to correct inventorship of an issued patent are decided by the Supervisory Patent Examiner, as set forth in the Commissioner’s memorandum dated June 2, 1989.
  • 2. In bracket 10, insert the correspondence address of record.
  • 3. This form paragraph is printed with the USPTO letterhead.
  • 4. Prepare Certificate using form paragraph 10.15.

¶ 10.14 Treatment of Request Under 37 CFR 1.48 Petition Under 37 CFR 1.324, Petition Granted

In re Patent No. [1] :Issue Date: [2] : DECISION Appl. No.: [3] : GRANTINGFiled: [4] : PETITIONFor: [5] : 37 CFR 1.324

This is a decision on the request under 37 CFR 1.48, filed [6]. In view of the fact that the patent has already issued, the request under 37 CFR 1.48 has been treated as a petition to correct inventorship under 37 CFR 1.324.

The petition is granted.

The patented file is being forwarded to Certificates of Correction Branch for issuance of a certificate naming only the actual inventor or inventors.

_______________________

[7]

Supervisory Patent Examiner,

Art Unit [8],

Technology Center [9]

[10]

Examiner Note:

  • 1. Petitions to correct inventorship of an issued patent are decided by the Supervisory Patent Examiner, as set forth in the Commissioner’s memorandum dated June 2, 1989.
  • 2. This form paragraph is printed with the USPTO letterhead.
  • 3. Prepare Certificate using form paragraph 10.15.
  • 4. In bracket 10, insert the correspondence address of record.

¶ 10.15 Memorandum - Certificate of Correction (Inventorship)

DATE: [1]TO: Certificates of Correction BranchFROM: [2], SPE, Art Unit [3]SUBJECT: Request for Certificate of Correction

Please issue a Certificate of Correction in U. S. Letters Patent No. [4] as specified on the attached Certificate.

______________________

[5], SPE

Art Unit [6]

UNITED STATES PATENT AND TRADEMARK OFFICE CERTIFICATEPatent No. [7]Patented: [8]

On petition requesting issuance of a certificate for correction of inventorship pursuant to 35 U.S.C. 256, it has been found that the above identified patent improperly sets forth the inventorship. Accordingly, it is hereby certified that the correct inventorship of this patent is:

[9]

_________________________

[10], Supervisory Patent Examiner

Art Unit [11]

Examiner Note:

  • 1. In bracket 9, insert the full name and residence (City, State) of each actual inventor.
  • 2. This is an internal memo, not to be mailed to applicant, which accompanies the patented file to Certificates of Correction Branch as noted in form paragraphs 10.13 and 10.14.
  • 3. In brackets 5 and 10, insert name of SPE; in brackets 6 and 11 the Art Unit and sign above each line.
  • 4. Two separate pages of USPTO letterhead will be printed when using this form paragraph.

¶ 10.16.fti Petition Under 37 CFR 1.324 filed prior to September 16, 2012, Dismissed

In re Patent No. [1] :Issue Date: [2] : DECISION Appl. No.: [3] : DISMISSING Filed: [4] : PETITIONFor: [5] : 37 CFR 1.324

This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.

The petition is dismissed.

A petition to correct inventorship under 37 CFR 1.324 filed before September 16, 2012, requires (1) a statement from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on their part, (2) a statement from the current named inventors (including any “inventor” being deleted) who have not submitted a statement as per “(1)” either agreeing to the change of inventorship or stating that they have no disagreement in regard to the requested change, (3) a statement in compliance with 3.73(b) from all assignees of the parties submitting a statement under “(1)” and “(2)” agreeing to the change of inventorship in the patent; and (4) the fee set forth in 37 CFR 1.20(b).This petition lacks item(s) [7].

_______________________

[8]

Supervisory Patent Examiner,

Art Unit [9],

Technology Center [10]

[11]

Examiner Note:

  • 1. If each of the four specified items has been submitted but one or more is insufficient, the petition should be denied. See form paragraph 10.17. However, if the above noted deficiency can be cured by the submission of a renewed petition, a dismissal would be appropriate.
  • 2. If the petition includes a request for suspension of the rules (37 CFR 1.183) of one or more provisions of 37 CFR 1.324 that are required by the statute (35 U.S.C. 256), form paragraph 10.18 should follow this form paragraph.
  • 3. In bracket 7, pluralize as necessary and insert the item number(s) which are missing.
  • 4. In bracket 11, insert correspondence address of record.
  • 5. This form paragraph is printed with the USPTO letterhead.
  • 6 This form paragraph should only be used if the petition under 37 CFR 1.324 was filed before September 16, 2012. If the petition was filed on or after September 16, 2012, use form paragraph 10.16.01.

¶ 10.16.01 Petition Under 37 CFR 1.324 filed on or after September 16, 2012, Dismissed

In re Patent No. [1] :

Issue Date: [2] : DECISION

Appl. No.: [3] : DISMISSING

Filed: [4] : PETITION

For: [5] : 37 CFR 1.324

This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.

The petition is dismissed.

A petition to correct inventorship under 37 CFR 1.324 filed on or after September 16, 2012, requires (1) a statement from each person who is being added as an inventor and each person who is currently named as an inventor (including any “inventor” being deleted) either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested change, (2) a statement in compliance with 37 CFR 3.73(c) from all assignees of the parties submitting a statement under “(1)” agreeing to the change of inventorship in the patent; and (3) the fee set forth in 37 CFR 1.20(b). This petition lacks item(s) [7].

_______________________

[8]

Supervisory Patent Examiner,

Art Unit [9],

Technology Center [10]

[11]

Examiner Note:

  • 1. If each of the three specified items has been submitted but one or more is insufficient, the petition should be denied. See form paragraph 10.17. However, if the above noted deficiency can be cured by the submission of a renewed petition, a dismissal would be appropriate.
  • 2. If the petition includes a request for suspension of the rules (37 CFR 1.183) of one or more provisions of 37 CFR 1.324 that are required by the statute (35 U.S.C. 256), form paragraph 10.18 should follow this form paragraph.
  • 3. In bracket 7, pluralize as necessary and insert the item number(s) which are missing.
  • 4. In bracket 11, insert correspondence address of record.
  • 5. This form paragraph is printed with the USPTO letterhead.

¶ 10.17 Petition Under 37 CFR 1.324, Denied

In re Patent No. [1]:Issue Date: [2]:DECISION DENYING PETITIONAppl. No.: [3]:37 CFR 1.324Filed: [4]:For: [5]:

This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324.

The petition is denied.

[7]

_______________________

[8]

Supervisory Patent Examiner,

Art Unit [9],

Technology Center [10]

[11]

Examiner Note:

  • 1. In bracket 7, a full explanation of the deficiency must be provided.
  • 2. If the petition lacks one or more of the required parts set forth in 37 CFR 1.324, it should be dismissed using form paragraph 10.14 or 10.20, rather than being denied.
  • 3. In bracket 11, insert correspondence address of record.
  • 4. This form paragraph is printed with the USPTO letterhead.

¶ 10.18 Waiver of Requirements of 37 CFR 1.324 Under 37 CFR 1.183, Dismissed

Suspension of the rules under 37 CFR 1.183 may be granted for any requirement of the regulations which is not a requirement of the statutes. In this instance, 35 U.S.C. 256 requires [1]. Accordingly, the petition under 37 CFR 1.183 is dismissed.

Examiner Note:

1. This form paragraph should follow form paragraph 10.16.fti whenever the petition requests waiver of one or more of the provisions of 37 CFR 1.324 that are also requirements of 35 U.S.C. 256.

2. If the petition requests waiver of requirements of 37 CFR 1.324 that are not specific requirements of the statute (i.e., the fee or the oath or declaration by all inventors), the application must be forwarded to a petitions attorney in the Office of the Deputy Commissioner for Patent Examination Policy for decision.

1481.03 Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits [R-08.2017]

I. CORRECTION TO PERFECT CLAIM FOR 35 U.S.C. 119 (a)-(d) AND (f) BENEFITS

See MPEP § 216.01 for a discussion of when 35 U.S.C. 119(a)-(d) and (f) benefits can be perfected by certificate of correction.

II. CORRECTION AS TO 35 U.S.C. 120 AND 35 U.S.C. 119(e) BENEFITS

37 CFR 1.78  Claiming benefit of earlier filing date and cross-references to other applications.

  • (a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. An applicant in a nonprovisional application, other than for a design patent, or an international application designating the United States may claim the benefit of one or more prior-filed provisional applications under the conditions set forth in 35 U.S.C. 119(e) and this section.
    • (1) The nonprovisional application or international application designating the United States must be:
      • (i) Filed not later than twelve months after the date on which the provisional application was filed, subject to paragraph (b) of this section (a subsequent application); or
      • (ii) Entitled to claim the benefit under 35 U.S.C. 120, 121, or 365(c) of a subsequent application that was filed within the period set forth in paragraph (a)(1)(i) of this section.
    • (2) Each prior-filed provisional application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed provisional application must be entitled to a filing date as set forth in § 1.53(c), and the basic filing fee set forth in § 1.16(d) must have been paid for such provisional application within the time period set forth in § 1.53(g).
    • (3) Any nonprovisional application or international application designating the United States that claims the benefit of one or more prior-filed provisional applications must contain, or be amended to contain, a reference to each such prior-filed provisional application, identifying it by the provisional application number (consisting of series code and serial number). If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)).
    • (4) The reference required by paragraph (a)(3) of this section must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed provisional application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior-filed provisional application. Except as provided in paragraph (c) of this section, failure to timely submit the reference is considered a waiver of any benefit under 35 U.S.C. 119(e) of the prior-filed provisional application. The time periods in this paragraph do not apply if the later-filed application is:
      • (i) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
      • (ii) An international application filed under 35 U.S.C. 363 before November 29, 2000.
    • (5) If the prior-filed provisional application was filed in a language other than English and both an English-language translation of the prior-filed provisional application and a statement that the translation is accurate were not previously filed in the prior-filed provisional application, the applicant will be notified and given a period of time within which to file, in the prior-filed provisional application, the translation and the statement. If the notice is mailed in a pending nonprovisional application, a timely reply to such a notice must include the filing in the nonprovisional application of either a confirmation that the translation and statement were filed in the provisional application, or an application data sheet eliminating the reference under paragraph (a)(3) of this section to the prior-filed provisional application, or the nonprovisional application will be abandoned. The translation and statement may be filed in the provisional application, even if the provisional application has become abandoned.
    • (6) If a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a provisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed provisional application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the nonprovisional application. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
  • (b) Delayed filing of the subsequent nonprovisional application or international application designating the United States. If the subsequent nonprovisional application or international application designating the United States has a filing date which is after the expiration of the twelve-month period set forth in paragraph (a)(1)(i) of this section but within two months from the expiration of the period set forth in paragraph (a)(1)(i) of this section, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent nonprovisional application or international application designating the United States within the period set forth in paragraph (a)(1)(i) of this section was unintentional.
    • (1) A petition to restore the benefit of a provisional application under this paragraph filed on or after May 13, 2015, must be filed in the subsequent application, and any petition to restore the benefit of a provisional application under this paragraph must include:
      • (i) The reference required by 35 U.S.C. 119(e) to the prior-filed provisional application in an application data sheet (§ 1.76(b)(5)) identifying it by provisional application number (consisting of series code and serial number), unless previously submitted;
      • (ii) The petition fee as set forth in § 1.17(m); and
      • (iii) A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period set forth in paragraph (a)(1)(i) of this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
    • (2) The restoration of the right of priority under PCT Rule 26bis.3 to a provisional application does not affect the requirement to include the reference required by paragraph (a)(3) of this section to the provisional application in a national stage application under 35 U.S.C. 371 within the time period provided by paragraph (a)(4) of this section to avoid the benefit claim being considered waived.
  • (c) Delayed claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. If the reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section is presented in an application after the time period provided by paragraph (a)(4) of this section, the claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application may be accepted if the reference identifying the prior-filed application by provisional application number was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application must be accompanied by:
    • (1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section to the prior-filed provisional application, unless previously submitted;
    • (2) The fee set forth in § 1.17(m); and
    • (3) A statement that the entire delay between the date the benefit claim was due under paragraph (a)(4) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
  • (d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
    • (1) Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed application must either be:
      • (i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States;
      • (ii) An international design application entitled to a filing date in accordance with § 1.1023 and designating the United States; or
      • (iii) A nonprovisional application under 35 U.S.C. 111(a) that is entitled to a filing date as set forth in § 1.53(b) or (d) for which the basic filing fee set forth in § 1.16 has been paid within the pendency of the application.
    • (2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
    • (3)
      • (i) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section must be submitted during the pendency of the later-filed application.
      • (ii) If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior-filed application. The time periods in this paragraph do not apply if the later-filed application is:
        • (A) An application for a design patent;
        • (B) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
        • (C) An international application filed under 35 U.S.C. 363 before November 29, 2000.
      • (iii) Except as provided in paragraph (e) of this section, failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is considered a waiver of any benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application.
    • (4) The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior-filed application. The identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.
    • (5) Cross-references to other related applications may be made when appropriate (see § 1.14), but cross-references to applications for which a benefit is not claimed under title 35, United States Code, must not be included in an application data sheet (§ 1.76(b)(5)).
    • (6) If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims the benefit of the filing date of a nonprovisional application or an international application designating the United States filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the later-filed application. An applicant is not required to provide such a statement if either:

      • (i) The application claims the benefit of a nonprovisional application in which a statement under § 1.55(k), paragraph (a)(6) of this section, or this paragraph that the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013 has been filed; or
      • (ii) The applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the later filed application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
    • (7) Where benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application or an international design application which designates but did not originate in the United States, the Office may require a certified copy of such application together with an English translation thereof if filed in another language.
  • (e) Delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. If the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is presented after the time period provided by paragraph (d)(3) of this section, the claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States may be accepted if the reference required by paragraph (d)(2) of this section was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be accompanied by:
    • (1) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section to the prior-filed application, unless previously submitted;
    • (2) The petition fee set forth in § 1.17(m); and
    • (3) A statement that the entire delay between the date the benefit claim was due under paragraph (d)(3) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
  • (f) Applications containing patentably indistinct claims. Where two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
  • (g) Applications or patents under reexamination naming different inventors and containing patentably indistinct claims. If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same person and contain patentably indistinct claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the Office may require the applicant or assignee to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on such date, and if not, indicate which named inventor is the prior inventor, as applicable. Even if the claimed inventions were commonly owned, or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the patentably indistinct claims may be rejected under the doctrine of double patenting in view of such commonly owned or assigned applications or patents under reexamination.
  • (h) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (a)(3) and (d)(2) of this section that any specific reference to a prior-filed application be presented in an application data sheet (§ 1.76), this requirement in paragraph (a)(3) and (d)(2) of this section will be satisfied by the presentation of such specific reference in the first sentence(s) of the specification following the title in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012. The provisions of this paragraph do not apply to any specific reference submitted for a petition under paragraph (b) of this section to restore the benefit of a provisional application.
  • (i) Petitions required in international applications. If a petition under paragraph (b), (c), or (e) of this section is required in an international application that was not filed with the United States Receiving Office and is not a nonprovisional application, then such petition may be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the international application and will be treated as having been filed in the international application.
  • (j) Benefit under 35 U.S.C. 386(c). Benefit under 35 U.S.C. 386(c) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
  • (k) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).

Title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA) amended 35 U.S.C. 119(e)(1) to provide that:

No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this subsection.

Specifically, 35 U.S.C. 119(e)(1) is effective for all patents whenever granted and no longer requires that the amendment containing the specific reference to the earlier-filed provisional application be submitted during the pendency of the application. Thus, the prior prohibition on granting certificates of correction to add or correct a claim for the benefit of a prior provisional application no longer applies. A certificate of correction to add or correct a claim for the benefit of a prior provisional application under 35 U.S.C. 119(e) may now be available under certain conditions. See subsection A. entitled “Conditions for Certificate of Correction” below. In addition, effective May 13, 2015, 37 CFR 1.78(d)(3) was revised to make the procedures under 37 CFR 1.78(e) to accept an unintentionally delayed benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c) applicable to design applications, and thus, accords applicants in design applications the same remedy that was only previously available to applicants in utility and plant applications. 37 CFR 1.78(d)(3)(i) provides that the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) must be submitted during the pendency of the later-filed application. For design applications, this time period is the only applicable time period for when the required reference must be submitted because the time period set forth in 37 CFR 1.78(d)(3)(ii) (i.e., four months from the filing date of the later-filed application or sixteen months from the filing date of the prior-filed application) does not apply to an application for a design patent. If the required reference to the prior-filed application is not submitted during the pendency of the later-filed design application, then a petition to accept an unintentionally delayed benefit claim under 37 CFR 1.78(e) may be filed. See 37 CFR 1.78(d)(3)(iii). Thus, a petition under 37 CFR 1.78(e) may be filed along with a request for a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 in a design patent if the required reference to the prior-filed application was not submitted during the pendency of the later-filed design application.

Under certain conditions as specified below a certificate of correction can be used, with respect to a benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(c), to correct:

  • (A) the failure to make reference to a prior copending nonprovisional application, international application designating the United States, or international design application designating the United States pursuant to 37 CFR 1.78(d)(2);
  • (B) an incorrect reference to a prior copending nonprovisional application, international application designating the United States, or international design application designating the United States pursuant to 37 CFR 1.78(d)(2);
  • (C) the failure to make reference to a prior provisional application pursuant to 37 CFR 1.78(a)(3); or
  • (D) an incorrect reference to a prior provisional application pursuant to 37 CFR 1.78(a)(3).
A. Conditions for Certificate of Correction
  • 1. Where a benefit claim based upon 35 U.S.C. 120 to a national application is to be asserted or corrected in a patent via a certificate of correction, the following conditions must be satisfied:
    • (A) all requirements set forth in 37 CFR 1.78(d)(1) must have been met in the application which became the patent to be corrected;
    • (B) it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 211et seq.); and
    • (C) a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78(e) must be filed, including the petition fee as set forth in 37 CFR 1.17(m).
  • 2. Where a benefit claim based upon 35 U.S.C. 120 and 365(c) to an international application, or 35 U.S.C. 120 and 386(c) to an international design application, is to be asserted or corrected in a patent via a certificate of correction, the following conditions must be satisfied:
    • (A) all requirements set forth in 37 CFR 1.78(d)(1) must have been met in the application which became the patent to be corrected;
    • (B) it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 211et seq.);
    • (C) the patentee must submit together with the request for the certificate, copies of documentation showing designation of states and any other information needed to make it clear from the record that the 35 U.S.C. 120 priority is appropriate (see MPEP § 211et seq. as to the requirements for 35 U.S.C. 120 priority based on an international application or an international design application); and
    • (D) a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78(e) must be filed, including the petition fee as set forth in 37 CFR 1.17(m).

    Benefit under 35 U.S.C. 386(c) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon. See MPEP § 211.01(d).

    Where a benefit claim based upon 35 U.S.C. 120, 121, 365(c), or 386(c) is timely submitted, a petition under 37 CFR 1.78(e) is not required for correcting the benefit claim by changing the relationship of the applications (e.g., changing from “continuation” or “divisional” to “continuation-in-part” or from “continuation-in-part” to “continuation” or “divisional”) whether filed during the pendency of the later-filed application or after patent grant. See MPEP § 211.03. However, a change in the relationship may require comparing the disclosures of the applications which would require further examination and thus such a change would not be appropriate via a certificate of correction. In addition, there is significance to the designation of the relationship as “continuation,” “divisional,” or “continuation-in-part.” For example, the safe harbor of 35 U.S.C. 121 only protects divisional applications, not continuation applications or continuation-in-part applications. See Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1362, 86 USPQ2d 1001, 1007-08 (Fed. Cir. 2008) and Amgen v. Hoffman-La Roche, 580 F.3d 1340, 1352-1354, 92 USPQ2d 1289, 1298-1300 (Fed. Cir. 2009). Changing the relationship to or from a “divisional” may impact the applicability of the safe harbor provision or a nonstatutory double patenting rejection.

  • 3. Where a benefit claim based upon 35 U.S.C. 119(e) to a prior provisional application is to be asserted or corrected in a patent via a certificate of correction, the following conditions must be satisfied:
    • A. all requirements set forth in 37 CFR 1.78(a)(1) and (a)(2) must have been met in the application which became the patent to be corrected;
    • B. it must be clear from the record of the patent and the parent application(s) that priority is appropriate (see MPEP § 211et seq.); and
    • C. a grantable petition to accept an unintentionally delayed claim under 37 CFR 1.78(c) must be filed, including the petition fee as set forth in 37 CFR 1.17(m).

Except in certain situations, if all the above-stated conditions for benefit claims discussed in A.1-3 are satisfied, a certificate of correction can generally be used to amend the patent to make reference to a prior application, or to correct an incorrect reference to the prior application.

In situations where a petition under 37 CFR 1.78 is filed with a request for a certificate of correction in an issued patent, the petition should not be granted where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., the addition of a benefit claim to a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA. In such situations, further examination would be required and thus a petition for an unintentionally delayed benefit claim should not be granted absent the filing of a reissue application.

Exemplary situations where a petition under 37 CFR 1.78 with a certificate of correction may be appropriate:

  • (A) Adding or correcting a claim to a prior application having a filing date before March 16, 2013 to a patent that was examined (as indicated on the notice of allowance or a later Office communication such as a supplemental Notice of Allowance) under the first to invent provisions of pre-AIA law.
  • (B) Adding or correcting a claim to a prior application having a filing date before March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first inventor to file provisions of the AIA and where the 37 CFR 1.55/1.78 statement (see MPEP § 210, subsection III) is filed concurrently with the petition (since the presence of the statement would not result in a switch in the statutory framework).
  • (C) Adding a claim to a prior application having a filing date on or after March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first to invent provisions of pre-AIA law.
  • (D) Adding or correcting a claim to a prior application having a filing date on or after March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first inventor to file provisions of the AIA.

Exemplary situations where a certificate of correction may not be appropriate:

  • (A) Adding or correcting a claim to a prior application having a filing date before March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first inventor to file provisions of the AIA and where the 37 CFR 1.55/1.78 statement is not present.
  • (B) Correcting a claim to a prior application having a filing date before March 16, 2013 to a claim to a prior application having a filing date on or after March 16, 2013 in a patent that was examined (as indicated on the Notice of Allowance or a later Office communication such as a supplemental Notice of Allowance) under the first to invent provisions of pre-AIA law.

If any of the above-stated conditions is not satisfied or if the correction sought would require further examination, the filing of a reissue application (see MPEP § 1401 - § 1460) may be appropriate to pursue the desired correction of the patent for benefit claims under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c).

See MPEP § 216.01 for a discussion of when a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be perfected by certificate of correction.

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