Certificate of Correction by a Third Party

By Eugene T. Perez

Scenario: Your client may be infringing a patent; however, the disputed claim has erroneous claim language, which could be corrected via a Certificate of Correction or other means. With the correction, there would be no infringement.

Relatively minor mistakes in an issued U.S. patent may be corrected by means of a certificate of correction. Correctable mistakes are of three basic types: (a) errors incurred through the fault of the USPTO; (b) errors made by the applicant; and (c) errors regarding the named inventors.

However, 37 C.F.R. § 1.322(a)(1)(iii) provides a provision for a third party (not the patent owner) to correct any of these three types of mistakes.  But as stated in 37 C.F.R. § 1.322(a)(2)(i)-(ii), there is no obligation on the Office to act on or respond to a submission of information or request to issue a certificate of correction by a third party; and papers submitted by a third party will not be made of record in the file that they relate to nor be retained by the Office. Also, the Office still has discretion to issue a Certificate of Correction. In addition, as stated in M.P.E.P. § 1480: “If Office mistakes are of such a nature that the meaning intended is obvious from the context, the Office may decline to issue a certificate and merely place the correspondence in the patented file, where it serves to call attention to the matter in case any question as to it subsequently arises. Such is the case, even where a correction is requested by the patentee or patentee’s assignee.”

In summary, a third party can anonymously request a Certificate of Correction, but the third party papers will not be made of record, and the Office has discretion in granting the Certificate of Correction.  Still, even if the request is declined, the request is made of record and the patent owner will be on notice of the request that a possible correction is needed.