Chapter §21.02 Certificates of Correction

• Jurisdiction: United States

§21.02 Certificates of Correction

In some cases, minor mistakes in a patent such as misspellings can be corrected by use of a certificate of correction. The opportunity to seek a certificate of correction arises once the patent applicant (or her patent attorney or agent) receives the official "ribbon copy" of her U.S. patent. The patent should be reviewed carefully for typographical accuracy and the document maintained in a safe place. If mistakes are found, steps should be taken promptly to correct them.⁴ The manner in which any minor mistakes in the patent can be remedied depends on the party responsible for the mistake: the USPTO or the applicant.

[A] USPTO at Fault

If minor mistakes in the issued patent are the fault of the USPTO, they can be corrected by seeking a certificate of correction in accordance with 35 U.S.C. §254. Because the mistake in the patent is the fault of the agency, there is no charge to the applicant for certificates of correction issued under 35 U.S.C. §254. This statutory section requires that the mistake in the patent was "incurred through the fault of the Patent and Trademark Office," and was "clearly disclosed by the records of the Office."⁵

For example, in Southwest Software, Inc. v. Harlequin, Inc.,⁶ the patent in suit was twice corrected under 35 U.S.C. §254: once to correct the agency's omission of a comma,⁷ and a second time to add to the issued patent a missing "Program Printout Appendix" that disclosed software code arguably necessary for enablement and best mode of the claimed method and apparatus for calibrating digital images in desktop publishing.⁸ This appendix was submitted by the patent applicant with the originally filed application but was inadvertently excluded from the patent specification when issued by the USPTO.⁹

[B] Applicant at Fault

If the mistake in the patent is the fault of the applicant rather than the USPTO, it may be remediable with a certificate of correction issued in accordance with 35 U.S.C. §255. To qualify under this section, the mistake must have occurred "in good faith" and be of "a clerical or typographical nature, or of minor character."¹⁰ For example, correction under §255 might be appropriate where a patent's written description referred to a certain process temperature in "degrees Celsius," but the claims as presented by the applicant merely recited "degrees."¹¹ Because the mistake is not the fault of the USPTO, the patent owner will be required to pay a fee for this type of...