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Question:
List two exemplary situations where a certificate of correction under 35 U.S.C. 255 may not be appropriate.
Answer:
Exemplary situations where a certificate of correction under 35 U.S.C. 255 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 1.55/78statement 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.
- (C) Correcting a claim to a prior application that would result in a later effective filing date for a claimed invention (even if it would not result in a change to the statutory framework under which the application was examined).
- (D) Correcting a claim to a prior application that would have the appearance of extending the patent term (even if it would not result in a later effective filing date for a claimed invention or a change to the statutory framework under which the application was examined).
Chapter Details:
The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers Correction of Patents.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1481 of the MPEP. The following is a brief summary of section 1481.
1481 Certificates of Correction – Applicant’s Mistake
This section discusses Certificates of correction which were not the fault of the Office. It covers the two separate statutory requirements that must be made before a Certificate of correction for an applicant’s mistake may issue.