Certificates of Correction and Third Parties

A certificate of correction is the lightest-weight way to fix an issued patent. It is meant for clerical and typographical errors and for minor mistakes of a similar character. Because certificates are issued without full examination, competitors sometimes worry that a patent owner will use one to change a patent in ways that matter.

What can a third party do when it spots an error, or believes a correction went too far? The answer is that its role at the USPTO is very limited, but its options in court are real.

Two sources of correction

The statute distinguishes between mistakes made by the Office and those made by the applicant:

	Office mistake	Applicant mistake
Statute	35 U.S.C. § 254	35 U.S.C. § 255
Rule	37 C.F.R. § 1.322	37 C.F.R. § 1.323
Who may request	Patentee, or the Office on its own initiative	Patentee
Kind of error	Mistake incurred through the fault of the Office, clearly shown by the records	Clerical, typographical or minor mistake, made in good faith, not requiring reexamination
Fee	None	Required

MPEP §§ 1480–1485 describe how the Office handles both kinds of requests.

What a third party can do at the USPTO

A third party cannot request a certificate of correction for an applicant’s mistake. Section 255 is a tool for the patentee, and the Office will not act on a third party’s request to correct an applicant error.

For Office mistakes, 37 C.F.R. § 1.322 allows the Office to issue a certificate on its own initiative. The rule also allows information about a mistake by the Office to be submitted by a third party. But the third party:

• does not become a party to any proceeding on the correction;
• has no right to participate further; and
• should not expect a response or a decision on its submission.

In practice, a third party’s submission is information the Office may act on if it agrees an Office mistake occurred.

Challenging a correction in litigation

The more significant tool for a third party is the ability to challenge a certificate of correction when the patent is asserted. A certificate is not immune from scrutiny because the Office issued it.

Broadening corrections

Section 255 allows a correction only if it does not involve changes that would constitute new matter or require reexamination. In Superior Fireplace Co. v. Majestic Products Co. (Fed. Cir. 2001), the Federal Circuit held that a § 255 correction that broadens a claim is permitted only where it is clearly evident from the specification, drawings and prosecution history how the error should be corrected.

If the record would allow more than one reasonable correction, or if a reader of the public record would not have recognized both the mistake and its fix, a broadening certificate can be held invalid. The court reasoned that the public is entitled to rely on the claims as issued unless the error and its correction are plain from the record.

Other grounds

A third party may also argue that the claimed mistake was not clerical, typographical or minor in character, or that the change introduces new matter. Errors of substance belong in reissue, where the change is examined, rather than in a certificate.

Timing: no retroactive effect

A certificate of correction does not reach backward. In Southwest Software, Inc. v. Harlequin Inc. (Fed. Cir. 2000), the court held that a certificate applies only to causes of action arising after it issues. For a lawsuit filed before the certificate, the patent is read as it stood before correction.

This matters to third parties because an owner who discovers an error only during litigation cannot use a certificate to rescue claims for past conduct. Courts may in some circumstances correct obvious errors themselves, but that power is limited.

Choosing among correction tools

The certificate process sits alongside other post-grant options:

• Certificate of correction for clerical or minor errors.
• Reissue for errors that make the patent inoperative or invalid, with full examination.
• Ex parte reexamination, which any person may request, for substantial new questions of patentability based on patents and printed publications.

For a third party that believes a patent is invalid, reexamination or an AIA trial is a more direct route than any submission about a certificate.

Key takeaways

• Third parties cannot request a certificate of correction under § 255.
• Under 37 C.F.R. § 1.322, a third party may submit information about an Office mistake but does not become a party and should not expect a response.
• A broadening correction is valid only if the error and its correction are clearly evident from the public record (Superior Fireplace, 2001).
• Certificates apply only to causes of action arising after issuance (Southwest Software, 2000).
• Substantive changes belong in reissue, not a certificate of correction.