The chart above shows the number of certificates of correction issued by the USPTO each year with a forecast through the end of 2015. After a patent issues, a patentee can petition for a correction of “clerical or typographical nature, or of minor character” or mistake by the USPTO. There is no fee if the error is a USPTO mistake and currently a $100 fee for correcting applicant-mistakes.
The number of corrections has remained relatively steady over the past 15 years. Since the number of patents issued has risen so dramatically, this steady-state of correction filings means that the average number of corrections per recently issued patent has dropped significantly since 2001.
There was an interesting decision involving a certificate of correction in Cubist Pharmaceuticals v. Hospira (Fed Cir 2015). In a nutshell, the PTO allowed (and the CAFC approved) the use of a certificate to correct a structure of a compound that was presented in the specification, where the original structure reflected the “universal belief” about the structure of the chemical at the time of filing (a belief that was mistaken) and the corrected structure reflected an “updated” (and correct) structure determined by an independent group of scientists.
The written description requirement was deemed satisfied because the specification referenced the compound by name “and disclosed relevant identifying characteristics that distinguished daptomycin from other compounds and thus showed that the inventors had possession of daptomycin, even though they may not have had an accurate picture of the entire chemical structure of that compound”.
Good case.
Yet another example of the Office can be sloppy but the Applicant must be perfect.
OT but BETTER FOOD CHOICES LLC v. MYNETDIARY, INC. [RULE 36 JUDGMENT] published today (judgment for defendants).
With that, these tr0lls should be at or near the end of their road. The main argument of the desperate patentees here was that “software is an apparatus.”
In the tradition of commenters making off-topic comments about interesting stuff at the Federal Circuit, there’s an oral argument next month on a mandamus petition raising the question whether the attorney-client privilege applies to patent agents. (Apparently not just patent agents acting at the direction of attorneys, but patent agents by themselves–I think the way the petition actually puts it is whether the court should recognize a “patent agent privilege”).
link to cafc.uscourts.gov
Panel P: Wednesday, December 02, 2015, 10:00 A.M., Courtroom 201
15-145 [WRIT] In Re Queen’s University at Kingston [argued]
This is a fascinating issue. It will be interesting to see what happens.
dcl, legal advice from a patent agent?
Are they even entitled to give legal advice?
Ned,
In Sperry v. Florida (U.S. Supreme Court 1963), Sperry was accused by the State Bar of unauthorized practice of law because he, inter alia, “render[ed] legal opinions, including opinions as to patentability or infringement on patent rights,” at page 382.
“We do not question the determination that under Florida law the preparation and prosecution of patent applications for others constitutes the practice of law,” at page 383.
After a long and interesting discussion of the history of patent agents, “It follows that the order enjoining petitioner must be vacated since it prohibits him from performing tasks which are incident to the preparation and prosecution of patent applications before the Patent Office,” at page 404.
Mr. Sperry also prepared assignments. That part, I am not sure about.
I had a patent agent working for me once who wanted to handle everything we did in the department, especially contracts. He was going to law school at the time, so it wasn’t that much of a problem to let him participate in everything.
But the ego does get in the way.
The Federal Circuit took the rare step of scheduling oral argument on a mandamus petition. I don’t know enough to have an opinion about how this should turn out. I’m mostly surprised that this issue wasn’t definitively settled a long time ago.
As a practical matter, will courts enforce patents with minor mistakes that are clearly/undisputably just typos – especially if the mistake was by the PTO? If so, what’s the need to do a certificate of correction?
Ken, I think Blindman addressed the issue in comment 3: “[I]t will always be cheaper [to get the certificate] than time paid for in litigation to get an interpretation for a typo…..”
I don’t agree with “always” because some typos may be so obvious and unimportant (e.g., a mispelling of “refrigerant” as “refrigerent”) that it’s not worth the defendant’s time to make an issue out of it. But that’s not true of all typos.
I should be interested in your thoughts on the way corrections are handled under the EPC. To be correctible, it has to be so, that the correction is obvious. Specifically:
“If the error is in the description, claims or drawings, the correction must be obvious in the sense that it is immediately evident that nothing else could have been intended than what is offered as the correction.”
link to epo.org
Now, if it is “immediately evident” why take the risk of even asking for the correction. And, if it is not “immediately evident” is it wise to dare to ask for a correction? And if it is not “immediately evident” is it proper, in any jurisdiction, even to think of permitting such an amendment under the guise of a “correction”?
As ever, it is a balance between the interests of the drafting attorney and those threatened with infringement proceedings. Should there be a public policy bias that helps attorneys out of self-dug holes?
Max, if the mistake is obvious, a court, using its equitable powers, can make the correction without a certificate of correction. Thus, one might ask why would anyone seek a certificate of correction if the mistake is noticed in the midst of an ongoing dispute because the consequence of a certificate of correction is that it is effective only for causes of action arising after certificate of correction.
Ned, standard for attorneys is “When in doubt, do nothing”. You have identified yet another such situation, no?
Max,
The USPTO is not quite as strict as the EPO, but your cite was to the Guidelines for Formalities Examination (before examination on the merits I presume). What is being discussed here also includes amendments made to claims (I understand that it is possible in the EPO) which are somehow not reflected in the issued patent. Does this ever happen in the EPO? If so, what advice in your jurisdiction?
Dennis, why the filter? Can you release please?
>>Should there be a public policy bias that helps attorneys out of self-dug holes?<<<
Depends.
Do it early in the process, shortly after issue, before others have fallen in the hole.
The public – the PTO – and the client – should expect a "professional" job, not a "perfect" job.
There is a legitimate difference.
Where I come from, people start falling into the hole (making decisions) as soon as the WO publishes, or the PTO A publishes, 18 months after the priority date. If you are going to be liberal with what it pleases you to call “corrections”, you need gracing of those intervening acts that took place before the correction was effected.
We are none of us perfect, agreed. So no intelligent patent system should expect or demand perfection, or be set up on the basis that perfection is attainable or even reasonable to expect.
Review of the file history and markup of the issued patent to prepare a request for a certificate of correction is a deadly boring job, and it takes a particularly focused proof reader type individual to handle the job properly and efficiently. In the days of real big printing jobs and posters and real paper books, I did a patent application for a guy that was a proofreader for his printing business. He made quite a mess of my otherwise perfect patent application draft. Interestingly, he wasn’t the least bit offended… and said “hey, this is what I do, I always find these kind of things in anything I review…..” I learned a lot about what it takes to get all of the minutia correct. But, it made finding a clerk who actually likes doing these CofCs much easier.
Many issued patents don’t have much wrong, and maybe nothing which is worth correcting. But, after the clerk has been through the exercise, it isn’t much more cost to just file the request and be done with it – as it will always be cheaper than time paid for in litigation to get an interpretation for a typo…..
On occasion, I’ve seen things like an order of magnitude mistake by the PTO printer in an issued claim limitation, or totally omitted claims, or an amendment which wasn’t entered. So, I suspect more folks likely should be doing requests for CofCs…..
Since the number of patents issued has risen so dramatically, this steady-state of correction filings means that the average number of corrections per recently issued patent has dropped significantly since 2001.
Presumably patentees are making greater use of other “corrective” alternatives (e.g., reissue or continuations) that avoid the potential inequitable conduct issues that might arise if the mistake seems to fall outside the scope of “clerical or typographical” errors.
MM, give us one, just one example, of a “mistake” that can be corrected by a certificate that could possibly affect patentability if it were not corrected.
Ned: one example of a “mistake” that can be corrected by a certificate that could possibly affect patentability if it were not corrected
A typo in a number recited in a claim — either the applicant’s fault or the PTO’s fault — causes the claim to be non-enabled or causes the claim to read on the prior art.
“or mistake by the USPTO.”
This requires further explanation / definition.
anony,
I think it is usually a clerical thing. One can amend the specification during prosecution but, to make it into the issued patent, someone has to pick it up from the file and make the changes to the filed application. In the same way, sometimes amended claims get mangled. This is why the PTO is so fussy about the formant for making amendments.
Ty!
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