MPEP § 1481 — MPEP § 1481
Current through: 2022-07-01

1481-Certificates of Correction - Applicant’s Mistake 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 1400 

 Section 1481 
 

 
 
 
 
 
 1481 Certificates of Correction - Applicant’s Mistake [R-07.2022]

 
 35 U.S.C. 255 
 Certificate of correction of applicant’s mistake. 

 Whenever a mistake of a clerical or typographical nature, or of minor
 character, which was not the fault of the Patent and Trademark Office, appears in a
 patent and a showing has been made that such mistake occurred in good faith, the
 Director may, upon payment of the required fee, issue a certificate of correction, if
 the correction does not involve such changes in the patent as would constitute new
 matter or would require reexamination. Such patent, together with the certificate, shall
 have the same effect and operation in law on the trial of actions for causes thereafter
 arising as if the same had been originally issued in such corrected form.
 

 

 
 37 CFR 1.323 Certificate of correction of applicant’s mistake. 

 The Office may issue a certificate of correction under the conditions
 specified in 35 U.S.C.
 255 at the request of the patentee or the patentee’s assignee,
 upon payment of the fee set forth in § 1.20(a) . If the request relates to
 a patent involved in an interference or trial before the Patent Trial and Appeal Board,
 the request must comply with the requirements of this section and be accompanied by a
 motion under §
 41.121(a)(2) , § 41.121(a)(3) or § 42.20 
 of this title.
 

 

 37 CFR
 1.323 relates to the issuance of certificates of correction for the
 correction of errors which were not the fault of the Office. Mistakes in a patent which are
 not correctable by certificate of correction may be correctable via filing a reissue
 application (see MPEP §
 1401 - § 1460 ). See Novo Industries,
 L.P. v. Micro Molds Corporation, 350 F.3d 1348, 69 USPQ2d 1128 (Fed. Cir.
 2003) (The Federal Circuit stated that when Congress in 1952 defined USPTO authority to
 make corrections with prospective effect, it did not deny correction authority to the
 district courts. A court, however, can correct only if 
 "(1) the correction is not subject to reasonable debate based on consideration of the
 claim language and the specification and (2) the prosecution history does not suggest a
 different interpretation..."
 
 
 ).
 

 In re Arnott, 19 USPQ2d 1049, 1052 (Comm’r Pat. 1991) specifies the
 criteria of 35 U.S.C.
 255 (for a certificate of correction) as follows:
 

 
 Two separate statutory requirements must be met before a Certificate of
 Correction for an applicant’s mistake may issue. The first statutory requirement
 concerns the nature, i.e., type, of the mistake for which a correction is sought. The
 mistake must be:
 

 (1) of a clerical nature,

 (2) of a typographical nature, or

 (3) a mistake of minor character.

 
 
 The second statutory requirement concerns the nature of the proposed
 correction. The correction must not involve changes which would:
 

 (1) constitute new matter or

 (2) require reexamination.

 
 If the above criteria are not satisfied, then a certificate of correction
 for an applicant’s mistake will not issue, and reissue must be employed as the vehicle to
 “correct” the patent. Usually, any mistake affecting claim scope must be corrected by
 reissue.
 

 A clerical or typographical mistake, except in unusual
 circumstances, is manifest from the contents of the file of the patent sought to be
 corrected. In re Arnott, 19 USPQ2d 1049, 1053 (Comm’r Pat. 1991). For
 example, obvious and immediately apparent mistakes, such as typographical errors in which
 the correct word is immediately known by its context, are errors that are manifest from the
 patent file contents. On the other hand, if evidence not in the patent file is needed to
 establish the existence of the error, then the error is likely not manifest from the
 contents of the file sought to be corrected.
 

 A clerical or typographical mistake in the benefit or
 foreign priority claim is typically not an error correctable by a certificate of correction
 and generally requires a petition under 37 CFR 1.78(e) or 37 CFR
 1.55(e) , respectively. See MPEP § 1481.03 for more information on
 correcting a benefit claim and MPEP § 216.01 for more information on
 correcting a foreign priority claim.
 

 A mistake is not considered to be of the “minor” character required for
 the issuance of a certificate of correction if the requested change would materially affect
 the scope or meaning of the patent. See also MPEP § 1412.04 as to correction of
 inventorship via certificate of correction or reissue.
 

 “A mistake that, if corrected, would broaden the scope of a
 claim must thus be viewed as highly important and thus cannot be a mistake of ’minor
 character.’ Accordingly, based on the plain meaning of the statutory language, we interpret
 ’a mistake of . . . minor character’ to exclude mistakes that broaden a claim.”
 Superior Fireplace Co. v. The Majestic Products Co., 270 F.3d 1358,
 1375, 60 USPQ2d 1668, 1681 (Fed. Cir. 2001). Filing a request for a certificate of
 correction for a broadened claim to correct an error by applicant of failing to properly
 present that broader claim would, if granted, be issuing a patent on a claim that had never
 been examined and is improper under certificate of correction practice. The filing of a
 reissue application may, in some instances, be appropriate to add a broadened claim to a
 patent. See MPEP §
 1402 . Failure by applicant to present a claim is an error in
 claim drafting, which is not correctable by a certificate of correction. In re
 Patent No 6550701, 2006 WL 4494426 (Comm’r Pat. 2006). 
 

 The fee for providing a correction of applicant’s mistake, other than
 inventorship, is set forth in 37 CFR 1.20(a) . The fee for correction
 of inventorship in a patent is set forth in 37 CFR 1.20(b) .
 

 
 1481.01 Correction of Assignees’ Names [R-01.2024]

 The Fee(s) Transmittal Form portion (PTOL-85B) of the Notice of
 Allowance provides a space (item 3) for assignment data which should be completed in
 order to comply with 37 CFR 3.81 . Unless an assignee’s name and address are identified
 in the appropriate space for specifying the assignee, (i.e., item 3 of the Fee(s)
 Transmittal Form PTOL-85B), the patent will issue to the applicant. Providing assignee
 information on the form PTOL-85B will result in identification of the assignee in the
 assignee field of the issued patent, but will not affect any change in the applicant of
 record. If the assignee is not the applicant of record, then an appropriate request
 under 37 CFR
 1.46(c) must be filed before or with the payment of the issue fee
 for the patent to reflect the assignee as both the applicant and the assignee.
 Assignment data printed on the patent will be based solely on the information supplied
 with the form PTOL-85B (or its equivalent) on the date that the issue fee is paid.
 Assignment information submitted after issue fee payment will not be printed on the
 patent. 
 

 I. AFTER PAYMENT OF ISSUE FEE OR ISSUANCE
 OF A PATENT Any request for the issuance of an application in the name of the
 assignee submitted after the date of payment of the issue fee, and any request for a
 patent to be corrected to state the name of the assignee must: 
 

 
 (A) state that the assignment was submitted for recordation as set
 forth in 37
 CFR 3.11 before issuance of the patent; 
 

 (B) include a request for a certificate of correction under
 37 CFR
 1.323 along with the fee set forth in 37 CFR
 1.20(a) ; and
 

 (C) include the processing fee set forth in 37 CFR
 1.17(i) .
 

 
 See 37 CFR 3.81(b) .
 

 Request to add or change the assignee information
 which does not comply with 37 CFR 3.81(b) will not be
 granted. Mistakenly adding assignee information on the form PTOL-85B is not a type of
 error correctable via certificate of correction.
 

 

 
 1481.02 Correction of Named Inventor [R-07.2022]

 35 U.S.C. 256 permits the Director
 to issue a certificate correcting the inventors named in a patent; 37 CFR 1.324 
 provides the criteria for requests to correct inventorship in a patent.
 Pre-AIA 35 U.S.C.
 256 requires that any error to be corrected must have been made
 “without deceptive intention.” Effective September 16, 2012, Public Law 112-29, sec. 20,
 125 Stat. 284 (Leahy-Smith America Invents Act (AIA)), amended 35 U.S.C. 256 
 to eliminate the “without deceptive intention” clause. See subsection I, below, for the
 requirements of a petition filed on or after September 16, 2012 to correct inventorship
 in a patent, and subsection II, below, for the requirements of such a petition filed
 before September 16, 2012.
 

 While 35 U.S.C. 256 was amended to remove
 the requirement that the error was made “without deceptive intention,” practitioners
 still have a duty to conduct a reasonable inquiry to name the actual inventors in a
 patent application. Specifically, 35 U.S.C. 115(i) requires that any
 declaration or statement filed pursuant to 35 U.S.C. 115 must contain an
 acknowledgement that any willful false statement made in the declaration or statement is
 punishable under 18
 U.S.C. 1001 by fine or imprisonment of not more than five (5)
 years, or both. Similarly, in naming inventors in an application data sheet, a
 provisional cover sheet or another paper, the person signing the papers is making a
 certification under 37
 CFR 11.18(b) , including a certification that all statements made
 in the papers are believed to be true. See 37 CFR 1.4(d)(4) . 
 

 In Egenera, Inc. v Cisco Sys., Inc., 
 972 F.3d 1367, 2020 USPQ2d 10997 (Fed. Cir. 2020), the court found that the patent owner
 was not judicially estopped from adding an inventor back to the patent when the patent
 owner removed that inventor during an early Office proceeding involving the patent.
 Specifically, the patent owner submitted a petition to remove an inventor due to claim
 construction advanced in an Office proceeding and that inventor was removed from the
 patent by the Office as a matter of formality by the “ministerial” 35 U.S.C. 256 
 process. In a related court proceeding, a different claim construction construing “logic
 to modify” as a means plus function limitation was adopted by the district court and
 affirmed on appeal. As a result of the different claim interpretation in the court
 decisions, the patent owner appropriately requested that the deleted inventor be added
 back to the patent. 
 

 While a request under 37 CFR 1.48 is appropriate to
 correct inventorship in a nonprovisional application, a petition
 under 37 CFR
 1.324 is the appropriate vehicle to correct inventorship in a
 patent. If a request under 37 CFR 1.48 is inadvertently filed
 in a patent, the request may be treated as a petition under 37 CFR 1.324 , and
 if it is grantable, form paragraph 10.14 set forth in subsection III,
 below should be used.
 

 Similarly, if a request under 37 CFR 1.48(a), (b), or (c) is filed
 in a pending application but not acted upon until after the application becomes a
 patent, the request may be treated as a petition under 37 CFR 1.324 , and
 if it is grantable, form paragraph 10.14 set forth below should be
 used.
 

 The statutory basis for correction of inventorship in a patent under
 37 CFR
 1.324 is 35 U.S.C. 256 . It is important to
 recognize that 35
 U.S.C. 256 is stricter than 35 U.S.C. 116 , the statutory basis
 for corrections of inventorship in applications under 37 CFR 1.48 .
 35 U.S.C.
 256 requires “on application of all the parties and assignees,”
 while 35 U.S.C.
 116 does not have the same requirement. Correction of inventorship
 in a patent under 37
 CFR 1.324 requires petition of all the parties, i.e., originally
 named inventors and assignees, in accordance with statute ( 35 U.S.C. 256 ) and
 thus the requirement cannot be waived. 
 

 Where applicant’s typographical error in an inventor’s
 name is recognized after the patent issues, a certificate of correction under
 37 CFR
 1.323 , the fee set forth in 37 CFR 1.20(a) , a petition under
 37 CFR
 1.182 , and the petition fee set forth in 37 CFR
 1.17(f) must be filed to request correction of the typographical
 error in the inventor’s name.
 

 Where an inventor changes their name, including a legal
 name change, after the patent issues, a certificate of correction cannot be filed to
 effect the name change in the patent. An inventor name change after a patent issues is
 neither a “mistake of a clerical or typographical nature, or of minor character” in
 accordance with 35
 U.S.C. 255 , nor a mistake that “is clearly disclosed by the
 records of the Office” in accordance with 35 U.S.C. 254 . Additionally, an
 inventor name change, including a legal name change, after the patent issues is not a
 correction of inventorship under 35 U.S.C. 256 .
 

 Similarly, where an inventor changes their name,
 including a legal name change, prior to issuance of the patent but did not correct their
 name while the patent application was pending, a certificate of correction cannot be
 filed to effect the inventor name change in the patent because the name of the inventor
 was correct at the time of filing the application and was not changed during the
 pendency of the application. Submitting a request for correction of inventorship under
 35 U.S.C.
 256 due to an inventor that changed their legal name is
 inappropriate. 
 

 All requests to make a correction of a named inventor
 should include the certificate of correction form (PTO/SB/44). If the completed form is
 not provided, the name of the inventors along with their residence information is
 required for the Office to print the certificate of correction.
 

 I. REQUEST FILED ON OR AFTER SEPTEMBER 16, 2012, TO CORRECT NAMED INVENTOR [Editor Note: See subsection II below, for requests filed before September
 16, 2012.] 

 
 35 U.S.C. 256 
 Correction of named inventor. 

 
 (a) CORRECTION.- Whenever through error a person is named in an
 issued patent as the inventor, or through error an inventor is not named in
 an issued patent, the Director may, on application of all the parties and
 assignees, with proof of the facts and such other requirements as may be
 imposed, issue a certificate correcting such error. 
 

 (b) PATENT VALID IF ERROR CORRECTED.- The error of omitting
 inventors or naming persons who are not inventors shall not invalidate the
 patent in which such error occurred if it can be corrected as provided in
 this section. The court before which such matter is called in question may
 order correction of the patent on notice and hearing of all parties
 concerned and the Director shall issue a certificate accordingly. 
 

 
 

 
 37 CFR 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C.
 256. 

 
 (a) Whenever through error a person is named in an issued
 patent as the inventor, or an inventor is not named in an issued patent, the
 Director, pursuant to 35 U.S.C. 256 , may, on
 application of all the parties and assignees, or on order of a court before
 which such matter is called in question, issue a certificate naming only the
 actual inventor or inventors. 
 

 (b) Any request to correct inventorship of a patent pursuant to
 paragraph (a) of this section must be accompanied by:
 
 (1) A statement from each person who is being added as an
 inventor and each person who is currently named as an inventor either
 agreeing to the change of inventorship or stating that he or she has
 no disagreement in regard to the requested change;
 

 (2) A statement from all assignees of the parties
 submitting a statement under paragraph (b)(1) of this section agreeing
 to the change of inventorship in the patent, which statement must
 comply with the requirements of §
 3.73(c) of this chapter; and
 

 (3) The fee set forth in §
 1.20(b) .
 

 
 

 (c) For correction of inventorship in an application, see
 §
 1.48 .
 

 (d) In an interference under part 41, subpart D, of this title,
 a request for correction of inventorship in a patent must be in the form of
 a motion under § 41.121(a)(2) of this
 title. In a contested case under part 42, subpart D, of this title, a
 request for correction of inventorship in a patent must be in the form of a
 motion under § 42.22 of this title.
 The motion under § 41.121(a)(2) or
 § 42.22 of this title
 must comply with the requirements of this section. 
 

 
 

 In requesting the Office to effectuate a court order correcting
 inventorship in a patent pursuant to 35 U.S.C. 256 , a copy of the
 court order and a certificate of correction under 37 CFR 1.323 must be submitted to
 the Certificates of Correction Branch. In addition, form PTO/SB/44 should be
 filed.
 

 A petition filed on or after September 16, 2012 to
 correct the inventorship in a patent must be accompanied by all of the following:
 

 
 (1) A statement from each person who is being added
 as an inventor and each person who is currently named as an inventor. Each
 inventor statement must either agree to the change of inventorship or state
 that the inventor has no disagreement in regard to the requested change. See
 37 CFR
 1.324(b)(1) .
 

 (2) A statement is required from the assignee(s) of
 the parties submitting a statement under 37 CFR 1.324(b)(1) agreeing
 to the change of inventorship in the patent, which statement must comply with
 the requirements of 37 CFR 3.73(c) . See
 37 CFR
 1.324(b)(2) . See MPEP §
 325 as to the requirements of a statement under
 37 CFR
 3.73(c) . A statement is required by each entity having an
 ownership interest in the patent.
 

 (3) The fee set forth in 37 CFR
 1.20(b) .
 

 
 If an inventor is not available, or refuses, to submit a statement,
 the assignee of the patent may wish to consider filing a reissue application to
 correct inventorship, because the inventor’s statement is not required for a
 non-broadening reissue application to correct inventorship. See MPEP §
 1412.04 .
 

 For correction of inventorship in a patent in an
 interference under 37 CFR part 41, subpart D, 37 CFR 1.324(d) provides that a
 request for correction of inventorship must be in the form of a motion under
 37 CFR
 41.121(a)(2) . For correction of inventorship in a contested
 case under 37 CFR part 42, subpart D, 37 CFR 1.324(d) provides that a
 request for correction of inventorship in a patent must be in the form of a motion
 under 37
 CFR 42.22 . 37 CFR 1.324(d) further provides
 that the motion made under 37 CFR 41.121(a)(2) or
 42.22 must comply with the requirements of 37 CFR
 1.324 .
 

 II. REQUEST FILED BEFORE SEPTEMBER 16, 2012, TO CORRECT NAMED INVENTOR [Editor Note: See subsection I above, for requests filed on or after
 September 16, 2012.] 

 
 Pre-AIA 35 U.S.C. 256 
 Correction of named inventor 

 Whenever through error a person is named in an
 issued patent as the inventor, or through error an inventor is not named in an
 issued patent and such error arose without any deceptive intention on his part,
 the Director may, on application of all the parties and assignees, with proof of
 the facts and such other requirements as may be imposed, issue a certificate
 correcting such error. 
 

 The error of omitting inventors or naming persons
 who are not inventors shall not invalidate the patent in which such error occurred
 if it can be corrected as provided in this section. The court before which such
 matter is called in question may order correction of the patent on notice and
 hearing of all parties concerned and the Director shall issue a certificate
 accordingly. 
 

 

 
 Pre-AIA 37 CFR 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C.
 256. 

 
 (a) Whenever through error a person is named in
 an issued patent as the inventor, or through error an inventor is not named
 in an issued patent and such error arose without any deceptive intention on
 his or her part, the Director, pursuant to 35 U.S.C.
 256 , may, on application of all the parties and
 assignees, or on order of a court before which such matter is called in
 question, issue a certificate naming only the actual inventor or inventors.
 A petition to correct inventorship of a patent involved in an interference
 must comply with the requirements of this section and must be accompanied by
 a motion under § 41.121(a)(2) or
 §
 41.121(a)(3) of this title. 
 

 (b) Any request to correct inventorship of a
 patent pursuant to paragraph (a) of this section must be accompanied by: 
 
 (1) Where one or more persons are being
 added, a statement from each person who is being added as an inventor
 that the inventorship error occurred without any deceptive intention
 on his or her part; 
 

 (2) A statement from the current named
 inventors who have not submitted a statement under paragraph (b)(1) of
 this section either agreeing to the change of inventorship or stating
 that they have no disagreement in regard to the requested change;
 

 (3) A statement from all assignees of the
 parties submitting a statement under paragraphs (b)(1) and (b)(2) of
 this section agreeing to the change of inventorship in the patent,
 which statement must comply with the requirements of §
 3.73(b) of this chapter; and
 

 
 
 (4) The fee set forth in §
 1.20(b) . 
 

 
 

 (c) For correction of inventorship in an
 application, see §§ 1.48 and
 1.497 . 
 

 (d) In a contested case before the Board of
 Patent Appeals and Interferences under part 41, subpart D, of this title, a
 request for correction of a patent must be in the form of a motion under
 §
 41.121(a)(2) or § 41.121(a)(3) of this
 title.
 

 
 

 In requesting the Office to effectuate a court order
 correcting inventorship in a patent pursuant to 35 U.S.C.
 256 , a copy of the court order and a certificate of correction
 under 37 CFR
 1.323 must be submitted to the Certificates of Correction
 Branch. A petition filed before September 16, 2012 to correct the inventorship in a
 patent must comply with the requirements of pre-AIA 37 CFR 1.324 , and must
 include the statements and fee required by pre-AIA 37 CFR 1.324(b) . 
 

 Under pre-AIA 37 CFR 1.324(b)(1) , a
 statement is required from each person who is being added as an inventor that the
 inventorship error occurred without any deceptive intention on their part. In order
 to satisfy this, a statement such as the following is sufficient:
 

 
 “The inventorship error of failing to include John
 Smith as an inventor of the patent occurred without any deceptive intention on the
 part of John Smith.” 
 

 
 Nothing more is required. The examiner will determine
 only whether the statement contains the required language; the examiner will not make
 any comment as to whether or not it appears that there was in fact deceptive
 intention (see MPEP §
 2012 ). 
 

 Under pre-AIA 37 CFR 1.324(b)(2) , all
 current inventors who did not submit a statement under pre-AIA 37 CFR
 1.324(b)(1) must submit a statement either agreeing to the
 change of inventorship, or stating that they have no disagreement with regard to the
 requested change. “Current inventors” include the inventor(s) being retained as such
 and the inventor(s) to be deleted. These current inventors need not make a statement
 as to whether the inventorship error occurred without deceptive intention. If an
 inventor is not available, or refuses, to submit a statement, the assignee of the
 patent may wish to consider filing a reissue application to correct inventorship,
 because the inventor’s statement is not required for a non-broadening reissue
 application to correct inventorship. See MPEP § 1412.04 . 
 

 Under pre-AIA 37 CFR 1.324(b)(2) , a
 statement is required from the assignee(s) of the patent agreeing to the change of
 inventorship in the patent. The assignee statement agreeing to the change of
 inventorship must be accompanied by a proper statement under pre-AIA 37 CFR
 3.73(b) establishing ownership, unless such a proper statement
 is already in the file. See MPEP § 324 as to the requirements of
 a statement under pre-AIA 37 CFR 3.73(b) .
 

 III. PETITION UNDER 37 CFR 1.324 Correction of inventorship requests under
 37 CFR
 1.324 should be directed to the Supervisory Patent Examiner
 (SPE) whose unit handles the subject matter of the patent. The SPE may use Form
 PTOL-306 to respond to the request under 37 CFR 1.324 . Alternatively, form
 paragraphs 10.13 through 10.18 may be used. 
 

 ¶ 10.13 Petition Under 37 CFR 1.324, Granted
In re Patent No. [1] :Issue Date: [2] : DECISION Appl. No.: [3] : GRANTING Filed: [4] : PETITION For: [5] : 37 CFR 1.324 This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324 .
 

 The petition is granted.

 The patented file is being forwarded to Certificates of Correction Branch
 for issuance of a certificate naming only the actual inventor or inventors.
 

 _______________________

 [7] 

 Supervisory Patent Examiner,

 Art Unit [8] ,
 

 Technology Center [9] 

 [10] 

 Examiner Note:
 
 1. Petitions to correct inventorship of an issued patent are decided by the Supervisory Patent Examiner , as set forth in the Commissioner’s memorandum dated June 2, 1989.
 

 2. In bracket 10, insert the correspondence address of record.

 3. This form paragraph is printed with the USPTO letterhead.

 4. Prepare Certificate using form paragraph 10.15.
 
 

 ¶ 10.14 Treatment of Request Under 37 CFR 1.48 Petition Under 37 CFR 1.324, Petition Granted
In re Patent No. [1] :Issue Date: [2] : DECISION Appl. No.: [3] : GRANTING Filed: [4] : PETITION For: [5] : 37 CFR 1.324 This is a decision on the request
 under 37 CFR
 1.48 , filed [6] . In view of the fact that the patent has
 already issued, the request under 37 CFR 1.48 has been treated as a petition
 to correct inventorship under 37 CFR 1.324 .
 

 The petition is granted.

 The patented file is being forwarded to Certificates of Correction
 Branch for issuance of a certificate naming only the actual inventor or inventors.
 

 _______________________

 [7] 

 Supervisory Patent Examiner,

 Art Unit [8] ,
 

 Technology Center [9] 

 [10] 

 Examiner Note:
 
 1. Petitions to correct inventorship of an issued patent are decided by the Supervisory Patent Examiner , as set forth in the Commissioner’s memorandum dated June 2, 1989.
 

 2. This form paragraph is printed with the USPTO letterhead.

 3. Prepare Certificate using form paragraph 10.15 .
 

 4. In bracket 10, insert the correspondence address of record.
 
 

 ¶ 10.15 Memorandum - Certificate of Correction (Inventorship)
DATE: [1] TO: Certificates of Correction BranchFROM: [2] , SPE, Art Unit [3] SUBJECT: Request for Certificate of Correction 
 Please issue a Certificate of
 Correction in U. S. Letters Patent No. [4] as specified on the attached
 Certificate.
 

 ______________________

 [5], SPE
 

 Art Unit [6] 

UNITED STATES PATENT AND TRADEMARK OFFICE
 CERTIFICATEPatent No. [7] Patented: [8] On petition requesting issuance of a
 certificate for correction of inventorship pursuant to 35 U.S.C. 256 , it has been found that the
 above identified patent improperly sets forth the inventorship. Accordingly, it is hereby
 certified that the correct inventorship of this patent is:
 

 [9] 

 _________________________

 [10], Supervisory Patent Examiner
 

 Art Unit [11] 

 Examiner Note:
 
 1. In bracket 9, insert the full
 name and residence (City, State) of each actual inventor.
 

 2. This is an internal memo, not
 to be mailed to applicant, which accompanies the patented file to Certificates of
 Correction Branch as noted in form paragraphs 10.13 and 10.14 .
 

 3. In brackets 5 and 10, insert
 name of SPE; in brackets 6 and 11 the Art Unit and sign above each line.
 

 4. Two separate pages of USPTO
 letterhead will be printed when using this form paragraph.
 
 
 

 ¶ 10.16.fti Petition Under 37 CFR 1.324 filed prior to September 16, 2012,
 Dismissed
 
In re Patent No. [1] :Issue Date: [2] : DECISION Appl. No.: [3] : DISMISSING Filed: [4] : PETITION For: [5] : 37
 CFR 1.324 This is a decision on the petition
 filed [6] to correct inventorship under 37 CFR 1.324 .
 

 The petition is
 dismissed.
 

 A petition to correct inventorship
 under 37 CFR
 1.324 filed before September 16, 2012, requires (1) a statement from
 each person who is being added as an inventor that the inventorship error occurred without any
 deceptive intention on their part, (2) a statement from the current named inventors (including
 any “inventor” being deleted) who have not submitted a statement as per “(1)” either agreeing
 to the change of inventorship or stating that they have no disagreement in regard to the
 requested change, (3) a statement in compliance with 3.73(b) from all
 assignees of the parties submitting a statement under “(1)” and “(2)” agreeing to the change
 of inventorship in the patent; and (4) the fee set forth in 37 CFR 1.20(b) .This
 petition lacks item(s) [7] .
 

 _______________________

 [8] 

 Supervisory Patent
 Examiner,
 

 Art Unit
 [9] ,
 

 Technology Center [10] 

 [11] 

 Examiner Note:
 
 1. If each of the four specified
 items has been submitted but one or more is insufficient, the petition should be
 denied . See form paragraph 10.17 . However, if the above noted
 deficiency can be cured by the submission of a renewed petition, a dismissal would be
 appropriate.
 

 2. If the petition includes a
 request for suspension of the rules ( 37 CFR 1.183 ) of one or more
 provisions of 37 CFR
 1.324 that are required by the statute ( 35 U.S.C. 256 ),
 form paragraph 10.18 should follow this form
 paragraph.
 

 3. In bracket 7, pluralize as
 necessary and insert the item number(s) which are missing.
 

 4. In bracket 11, insert
 correspondence address of record.
 

 5. This form paragraph is printed
 with the USPTO letterhead.
 

 6 This form paragraph should only be used if the
 petition under 37 CFR
 1.324 was filed before September 16, 2012. If the petition was
 filed on or after September 16, 2012, use form paragraph 10.16.01 .
 
 
 

 ¶ 10.16.01 Petition Under 37 CFR 1.324 filed on or after September 16,
 2012, Dismissed
 

 In re Patent No. [1] :
 

 Issue Date: [2] :
 DECISION 

 Appl. No.: [3] :
 DISMISSING 

 Filed: [4] :
 PETITION 

 For: [5] :
 37 CFR
 1.324 

 This is a decision on the petition filed [6]
 to correct inventorship under 37 CFR 1.324 .
 

 The petition is dismissed.

 A petition to correct inventorship under 37 CFR 1.324 
 filed on or after September 16, 2012, requires (1) a statement from each person who is being
 added as an inventor and each person who is currently named as an inventor (including any
 “inventor” being deleted) either agreeing to the change of inventorship or stating that he or
 she has no disagreement in regard to the requested change, (2) a statement in compliance with
 37 CFR
 3.73(c) from all assignees of the parties submitting a statement under
 “(1)” agreeing to the change of inventorship in the patent; and (3) the fee set forth in
 37 CFR
 1.20(b) . This petition lacks item(s) [7] .
 

 _______________________

 [8] 

 Supervisory Patent Examiner,

 Art Unit [9] ,
 

 Technology Center [10] 

 [11] 

 Examiner Note:
 
 1. If each of the three specified items has been
 submitted but one or more is insufficient, the petition should be
 denied . See form paragraph 10.17 . However, if the above noted
 deficiency can be cured by the submission of a renewed petition, a dismissal would be
 appropriate.
 

 2. If the petition includes a request for suspension of
 the rules ( 37
 CFR 1.183 ) of one or more provisions of 37 CFR 1.324 that
 are required by the statute ( 35 U.S.C. 256 ), form paragraph
 10.18 should
 follow this form paragraph.
 

 3. In bracket 7, pluralize as necessary and insert the
 item number(s) which are missing.
 

 4. In bracket 11, insert correspondence address of
 record.
 

 5. This form paragraph is printed with the USPTO
 letterhead.
 
 
 

 ¶ 10.17 Petition Under 37 CFR 1.324, Denied
In re Patent No. [1] :Issue Date: [2] : DECISION DENYING PETITION Appl. No.: [3] : 37 CFR 1.324 Filed: [4] :For: [5] :
 This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324 .
 

 The petition is denied.

 [7] 

 _______________________ 
 
 

 [8] 

 Supervisory Patent Examiner,

 Art Unit [9] ,
 

 Technology Center [10] 

 [11] 

 Examiner Note:
 
 1. In bracket 7, a full explanation of the deficiency must be provided.

 2. If the petition lacks one or more of the required parts set forth in 37 CFR 1.324 , it should be dismissed using form paragraph 10.14 or 10.20 , rather than being denied.
 

 3. In bracket 11, insert correspondence address of record.

 4. This form paragraph is printed with the USPTO letterhead.
 
 

 ¶ 10.18 Waiver of Requirements of 37 CFR 1.324 Under 37 CFR 1.183,
 Dismissed
 

 Suspension of the rules under
 37 CFR
 1.183 may be granted for any requirement of the regulations which is not
 a requirement of the statutes. In this instance, 35 U.S.C. 256 requires [1] .
 Accordingly, the petition under 37 CFR 1.183 is dismissed.
 

 Examiner Note:

 1. This form paragraph should follow form paragraph
 10.16.fti 
 whenever the petition requests waiver of one or more of the provisions of 37 CFR 1.324 that are
 also requirements of 35
 U.S.C. 256 .
 

 2. If the petition requests waiver of requirements of
 37 CFR
 1.324 that are not specific requirements of the statute (i.e., the
 fee or the oath or declaration by all inventors), the application must be forwarded to a
 petitions attorney in the Office of Petitions for decision.
 

 

 

 
 1481.03 Correction of 35 U.S.C. 119 and 35 U.S.C. 120
 Benefits [R-07.2022]
 
 I. CORRECTION TO PERFECT CLAIM FOR 35 U.S.C. 119 (a)-(d) AND (f) BENEFITS See MPEP § 216.01 for a discussion of
 when 35 U.S.C.
 119(a) - (d) and (f) benefits
 can be perfected by certificate of correction.
 

 II. CORRECTION AS TO 35 U.S.C. 120 AND 35 U.S.C. 119(e) BENEFITS 

 
 37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other
 applications. 

 
 (a) Claims under 35 U.S.C. 119(e) for
 the benefit of a prior-filed provisional application. An
 applicant in a nonprovisional application, other than for a design patent,
 or an international application designating the United States may claim the
 benefit of one or more prior-filed provisional applications under the
 conditions set forth in 35 U.S.C. 119(e) and
 this section.
 
 (1) The nonprovisional application or international
 application designating the United States must be:
 
 (i) Filed not later than twelve
 months after the date on which the provisional application was
 filed, subject to paragraph (b) of this section (a subsequent
 application); or 
 

 (ii) Entitled to claim the benefit
 under 35 U.S.C.
 120 , 121 , or 365(c) of a subsequent application that
 was filed within the period set forth in paragraph (a)(1)(i) of
 this section. 
 

 
 

 (2) Each prior-filed provisional application must name
 the inventor or a joint inventor named in the later-filed application
 as the inventor or a joint inventor. In addition, each prior-filed
 provisional application must be entitled to a filing date as set forth
 in § 1.53(c) , and the
 basic filing fee set forth in § 1.16(d) must
 have been paid for such provisional application within the time period
 set forth in § 1.53(g) . 
 

 (3) Any nonprovisional application or international
 application designating the United States that claims the benefit of
 one or more prior-filed provisional applications must contain, or be
 amended to contain, a reference to each such prior-filed provisional
 application, identifying it by the provisional application number
 (consisting of series code and serial number). If the later-filed
 application is a nonprovisional application, the reference required by
 this paragraph must be included in an application data sheet
 ( § 1.76(b)(5) ).
 
 

 (4) The reference required by paragraph (a)(3) of this
 section must be submitted during the pendency of the later-filed
 application. If the later-filed application is an application filed
 under 35 U.S.C. 111(a) ,
 this reference must also be submitted within the later of four months
 from the actual filing date of the later-filed application or sixteen
 months from the filing date of the prior-filed provisional
 application. If the later-filed application is a nonprovisional
 application entering the national stage from an international
 application under 35 U.S.C. 371 ,
 this reference must also be submitted within the later of four months
 from the date on which the national stage commenced under
 35 U.S.C. 371(b) or (f) ( §
 1.491(a) ), four months from the date of the
 initial submission under 35 U.S.C. 371 to
 enter the national stage, or sixteen months from the filing date of
 the prior-filed provisional application. Except as provided in
 paragraph (c) of this section, failure to timely submit the reference
 is considered a waiver of any benefit under 35 U.S.C.
 119(e) of the prior-filed provisional
 application. The time periods in this paragraph do not apply if the
 later-filed application is: 
 
 (i) An application filed under 35
 U.S.C. 111(a) before November 29, 2000; or
 

 (ii) An international application
 filed under 35 U.S.C. 363 before November 29, 2000.
 

 
 

 (5) If the prior-filed provisional
 application was filed in a language other than English and both an
 English-language translation of the prior-filed provisional
 application and a statement that the translation is accurate were not
 previously filed in the prior-filed provisional application, the
 applicant will be notified and given a period of time within which to
 file, in the prior-filed provisional application, the translation and
 the statement. If the notice is mailed in a pending nonprovisional
 application, a timely reply to such a notice must include the filing
 in the nonprovisional application of either a confirmation that the
 translation and statement were filed in the provisional application,
 or an application data sheet eliminating the reference under paragraph
 (a)(3) of this section to the prior-filed provisional application, or
 the nonprovisional application will be abandoned. The translation and
 statement may be filed in the provisional application, even if the
 provisional application has become abandoned.
 

 (6) If a nonprovisional application filed
 on or after March 16, 2013, claims the benefit of the filing date of a
 provisional application filed prior to March 16, 2013, and also
 contains, or contained at any time, a claim to a claimed invention
 that has an effective filing date as defined in §
 1.109 on or after March 16, 2013, the applicant
 must provide a statement to that effect within the later of four
 months from the actual filing date of the nonprovisional application,
 four months from the date of entry into the national stage as set
 forth in § 1.491 in an
 international application, sixteen months from the filing date of the
 prior-filed provisional application, or the date that a first claim to
 a claimed invention that has an effective filing date on or after
 March 16, 2013, is presented in the nonprovisional application. An
 applicant is not required to provide such a statement if the applicant
 reasonably believes on the basis of information already known to the
 individuals designated in § 1.56(c) that the
 nonprovisional application does not, and did not at any time, contain
 a claim to a claimed invention that has an effective filing date on or
 after March 16, 2013. 
 

 
 

 (b) Delayed filing of the subsequent
 nonprovisional application or international application designating the
 United States. If the subsequent nonprovisional application or
 international application designating the United States has a filing date
 which is after the expiration of the twelve-month period set forth in
 paragraph (a)(1)(i) of this section but within two months from the
 expiration of the period set forth in paragraph (a)(1)(i) of this section,
 the benefit of the provisional application may be restored under
 PCT
 Rule 26bis.3 for an international
 application, or upon petition pursuant to this paragraph, if the delay in
 filing the subsequent nonprovisional application or international
 application designating the United States within the period set forth in
 paragraph (a)(1)(i) of this section was unintentional.
 
 (1) A petition to restore the benefit of a
 provisional application under this paragraph filed on or after May 13,
 2015, must be filed in the subsequent application, and any petition to
 restore the benefit of a provisional application under this paragraph
 must include:
 
 (i) The reference required by
 35 U.S.C.
 119(e) to the prior-filed provisional
 application in an application data sheet ( §
 1.76(b)(5) ) identifying it by provisional
 application number (consisting of series code and serial
 number), unless previously submitted;
 

 (ii) The petition fee as set forth in
 § 1.17(m) ;
 and
 

 (iii) A statement that the delay in
 filing the subsequent nonprovisional application or
 international application designating the United States within
 the twelve-month period set forth in paragraph (a)(1)(i) of this
 section was unintentional. The Director may require additional
 information where there is a question whether the delay was
 unintentional.
 

 
 

 (2) The restoration of the right of
 priority under PCT Rule
 26bis.3 to a provisional
 application does not affect the requirement to include the reference
 required by paragraph (a)(3) of this section to the provisional
 application in a national stage application under 35 U.S.C.
 371 within the time period provided by paragraph
 (a)(4) of this section to avoid the benefit claim being considered
 waived.
 

 
 

 (c) Delayed claims under 35 U.S.C.
 119(e) for the benefit of a prior-filed provisional
 application. If the reference required by 35 U.S.C.
 119(e) and paragraph (a)(3) of this section is
 presented in an application after the time period provided by paragraph
 (a)(4) of this section, the claim under 35 U.S.C. 119(e) for the
 benefit of a prior-filed provisional application may be accepted if the
 reference identifying the prior-filed application by provisional application
 number was unintentionally delayed. A petition to accept an unintentionally
 delayed claim under 35 U.S.C. 119(e) for the
 benefit of a prior-filed provisional application must be accompanied by: 
 
 (1) The reference required by
 35 U.S.C. 119(e) and paragraph (a)(3) of this
 section to the prior-filed provisional application, unless previously
 submitted; 
 

 (2) The fee set forth in §
 1.17(m) ; and
 

 (3) A statement that the entire delay
 between the date the benefit claim was due under paragraph (a)(4) of
 this section and the date the benefit claim was filed was
 unintentional. The Director may require additional information where
 there is a question whether the delay was unintentional. 
 

 
 

 (d) Claims under 35 U.S.C. 120, 121,
 365(c), or 386(c) for the benefit of a prior-filed nonprovisional
 application, international application, or international design
 application. An applicant in a nonprovisional application
 (including a nonprovisional application resulting from an international
 application or international design application), an international
 application designating the United States, or an international design
 application designating the United States may claim the benefit of one or
 more prior-filed copending nonprovisional applications, international
 applications designating the United States, or international design
 applications designating the United States under the conditions set forth in
 35
 U.S.C. 120 , 121 , 365(c) , or 386(c) and this
 section.
 
 (1) Each prior-filed application must name
 the inventor or a joint inventor named in the later-filed application
 as the inventor or a joint inventor. In addition, each prior-filed
 application must either be:
 
 (i) An international application
 entitled to a filing date in accordance with PCT Article
 11 and designating the United States; 
 

 (ii) An international design
 application entitled to a filing date in accordance with
 § 1.1023 and
 designating the United States; or
 

 (iii) A nonprovisional application
 under 35 U.S.C.
 111(a) that is entitled to a filing date
 as set forth in § 1.53(b) or
 (d) for which the basic filing fee set
 forth in § 1.16 has
 been paid within the pendency of the application.
 

 
 

 (2) Except for a continued prosecution
 application filed under § 1.53(d) , any
 nonprovisional application, international application designating the
 United States, or international design application designating the
 United States that claims the benefit of one or more prior-filed
 nonprovisional applications, international applications designating
 the United States, or international design applications designating
 the United States must contain or be amended to contain a reference to
 each such prior-filed application, identifying it by application
 number (consisting of the series code and serial number),
 international application number and international filing date, or
 international registration number and filing date under
 § 1.1023 . If the
 later-filed application is a nonprovisional application, the reference
 required by this paragraph must be included in an application data
 sheet ( § 1.76(b)(5) ). The
 reference also must identify the relationship of the applications,
 namely, whether the later-filed application is a continuation,
 divisional, or continuation-in-part of the prior-filed nonprovisional
 application, international application, or international design
 application.
 

 (3) 
 
 (i) The reference required by
 35 U.S.C.
 120 and paragraph (d)(2) of this section
 must be submitted during the pendency of the later-filed
 application. 
 

 (ii) If the later-filed application
 is an application filed under 35
 U.S.C. 111(a) , this reference must also be
 submitted within the later of four months from the actual filing
 date of the later-filed application or sixteen months from the
 filing date of the prior-filed application. If the later-filed
 application is a nonprovisional application entering the
 national stage from an international application under
 35 U.S.C.
 371 , this reference must also be submitted
 within the later of four months from the date on which the
 national stage commenced under 35 U.S.C.
 371(b) or (f) ( §
 1.491(a) ), four months from the date of
 the initial submission under 35 U.S.C.
 371 to enter the national stage, or
 sixteen months from the filing date of the prior-filed
 application. The time periods in this paragraph do not apply if
 the later-filed application is:
 
 (A) An application for a
 design patent;
 

 (B) An application filed under
 35 U.S.C. 111(a) before November 29, 2000; or
 

 (C) An international
 application filed under 35 U.S.C. 363 before November 29,
 2000.
 

 
 

 (iii) Except as provided in paragraph
 (e) of this section, failure to timely submit the reference
 required by 35 U.S.C.
 120 and paragraph (d)(2) of this section
 is considered a waiver of any benefit under 35 U.S.C.
 120 , 121 , 365(c) , or
 386(c) to
 the prior-filed application.
 

 
 

 (4) The request for a continued prosecution
 application under § 1.53(d) is the
 specific reference required by 35 U.S.C. 120 to
 the prior-filed application. The identification of an application by
 application number under this section is the identification of every
 application assigned that application number necessary for a specific
 reference required by 35 U.S.C. 120 to
 every such application assigned that application number.
 

 (5) Cross-references to other related
 applications may be made when appropriate (see §
 1.14 ), but cross-references to applications for
 which a benefit is not claimed under title 35, United States Code,
 must not be included in an application data sheet ( §
 1.76(b)(5) ).
 

 (6) If a nonprovisional application filed on or
 after March 16, 2013, other than a nonprovisional international design
 application, claims the benefit of the filing date of a nonprovisional
 application or an international application designating the United
 States filed prior to March 16, 2013, and also contains, or contained
 at any time, a claim to a claimed invention that has an effective
 filing date as defined in § 1.109 that is on
 or after March 16, 2013, the applicant must provide a statement to
 that effect within the later of four months from the actual filing
 date of the later-filed application, four months from the date of
 entry into the national stage as set forth in §
 1.491 in an international application, sixteen
 months from the filing date of the prior-filed application, or the
 date that a first claim to a claimed invention that has an effective
 filing date on or after March 16, 2013, is presented in the
 later-filed application. An applicant is not required to provide such
 a statement if either:
 

 
 (i) The application claims the
 benefit of a nonprovisional application in which a statement
 under § 1.55(k) ,
 paragraph (a)(6) of this section, or this paragraph that the
 application contains, or contained at any time, a claim to a
 claimed invention that has an effective filing date on or after
 March 16, 2013 has been filed; or 
 

 (ii) The applicant reasonably believes
 on the basis of information already known to the individuals
 designated in § 1.56(c) 
 that the later filed application does not, and did not at any
 time, contain a claim to a claimed invention that has an
 effective filing date on or after March 16, 2013.
 

 
 

 (7) Where benefit is claimed under
 35 U.S.C. 120 ,
 121 ,
 365(c) , or 386(c) to an international application or an
 international design application which designates but did not
 originate in the United States, the Office may require a certified
 copy of such application together with an English translation thereof
 if filed in another language.
 

 
 

 (e) Delayed claims under 35 U.S.C. 120,
 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional
 application, international application, or international design
 application. If the reference required by 35 U.S.C.
 120 and paragraph (d)(2) of this section is presented
 after the time period provided by paragraph (d)(3) of this section, the
 claim under 35 U.S.C. 120 ,
 121 , 365(c) , or
 386(c) for the benefit
 of a prior-filed copending nonprovisional application, international
 application designating the United States, or international design
 application designating the United States may be accepted if the reference
 required by paragraph (d)(2) of this section was unintentionally delayed. A
 petition to accept an unintentionally delayed claim under 35 U.S.C.
 120 , 121 , 365(c) , or 386(c) for the benefit
 of a prior-filed application must be accompanied by:
 
 (1) The reference required by
 35 U.S.C. 120 and
 paragraph (d)(2) of this section to the prior-filed application,
 unless previously submitted; 
 

 (2) The petition fee set forth in
 § 1.17(m) ; and
 

 (3) A statement that the entire delay
 between the date the benefit claim was due under paragraph (d)(3) of
 this section and the date the benefit claim was filed was
 unintentional. The Director may require additional information where
 there is a question whether the delay was unintentional. 
 

 
 

 (f) Applications containing patentably indistinct claims. 
 Where two or more applications filed by the same applicant or assignee
 contain patentably indistinct claims, elimination of such claims from all
 but one application may be required in the absence of good and sufficient
 reason for their retention during pendency in more than one application.
 

 (g) Applications or patents under
 reexamination naming different inventors and containing patentably
 indistinct claims. If an application or a patent under
 reexamination and at least one other application naming different inventors
 are owned by the same person and contain patentably indistinct claims, and
 there is no statement of record indicating that the claimed inventions were
 commonly owned or subject to an obligation of assignment to the same person
 on the effective filing date (as defined in §
 1.109 ), or on the date of the invention, as
 applicable, of the later claimed invention, the Office may require the
 applicant or assignee to state whether the claimed inventions were commonly
 owned or subject to an obligation of assignment to the same person on such
 date, and if not, indicate which named inventor is the prior inventor, as
 applicable. Even if the claimed inventions were commonly owned, or subject
 to an obligation of assignment to the same person on the effective filing
 date (as defined in § 1.109 ), or on the date
 of the invention, as applicable, of the later claimed invention, the
 patentably indistinct claims may be rejected under the doctrine of double
 patenting in view of such commonly owned or assigned applications or patents
 under reexamination.
 

 (h) Applications filed before September
 16, 2012. Notwithstanding the requirement in paragraphs (a)(3)
 and (d)(2) of this section that any specific reference to a prior-filed
 application be presented in an application data sheet ( §
 1.76 ), this requirement in paragraph (a)(3) and (d)(2)
 of this section will be satisfied by the presentation of such specific
 reference in the first sentence(s) of the specification following the title
 in a nonprovisional application filed under 35 U.S.C.
 111(a) before September 16, 2012, or resulting from an
 international application filed under 35 U.S.C. 363 before
 September 16, 2012. The provisions of this paragraph do not apply to any
 specific reference submitted for a petition under paragraph (b) of this
 section to restore the benefit of a provisional application.
 

 (i) Petitions required in international applications. If a
 petition under paragraph (b), (c), or (e) of this section is required in an
 international application that was not filed with the United States
 Receiving Office and is not a nonprovisional application, then such petition
 may be filed in the earliest nonprovisional application that claims benefit
 under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to the
 international application and will be treated as having been filed in the
 international application.
 

 (j) Benefit under 35 U.S.C.
 386(c). Benefit under 35 U.S.C.
 386(c) with respect to an international design
 application is applicable only to nonprovisional applications, international
 applications, and international design applications filed on or after May
 13, 2015, and patents issuing thereon.
 

 (k) Time periods in this
 section. The time periods set forth in this section are not
 extendable, but are subject to 35 U.S.C. 21(b) (and
 § 1.7(a) ),
 PCT
 Rule 80.5 , and Hague Agreement Rule 4(4).
 

 
 

 Title II of the Patent Law Treaties Implementation Act of 2012
 (PLTIA) amended 35
 U.S.C. 119(e)(1) to provide that:
 

 
 No application shall be entitled to the benefit of
 an earlier filed provisional application under this subsection unless an amendment
 containing the specific reference to the earlier filed provisional application is
 submitted at such time during the pendency of the application as required by the
 Director. The Director may consider the failure to submit such an amendment within
 that time period as a waiver of any benefit under this subsection. The Director
 may establish procedures, including the payment of the fee specified in
 section
 41(a)(7) , to accept an unintentionally delayed submission of
 an amendment under this subsection.
 

 
 Specifically, 35 U.S.C. 119(e)(1) is effective
 for all patents whenever granted and no longer requires that the amendment containing
 the specific reference to the earlier-filed provisional application be submitted
 during the pendency of the application. Thus, the prior prohibition on granting
 certificates of correction to add or correct a claim for the benefit of a prior
 provisional application no longer applies. A certificate of correction to add or
 correct a claim for the benefit of a prior provisional application under
 35 U.S.C.
 119(e) may now be available under certain conditions. See
 subsection A. entitled “Conditions for Certificate of Correction” below. In addition,
 effective May 13, 2015, 37 CFR 1.78(d)(3) was revised to
 make the procedures under 37 CFR 1.78(e) to accept an
 unintentionally delayed benefit claim under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) applicable to design
 applications, and thus, accords applicants in design applications the same remedy
 that was only previously available to applicants in utility and plant applications.
 37 CFR
 1.78(d)(3)(i) provides that the reference required by
 35 U.S.C.
 120 and 37 CFR 1.78(d)(2) must be
 submitted during the pendency of the later-filed application. For design
 applications, this time period is the only applicable time period for when the
 required reference must be submitted because the time period set forth in
 37 CFR
 1.78(d)(3)(ii) (i.e., four months from the filing date of the
 later-filed application or sixteen months from the filing date of the prior-filed
 application) does not apply to an application for a design patent. If the required
 reference to the prior-filed application is not submitted during the pendency of the
 later-filed design application, then a petition to accept an unintentionally delayed
 benefit claim under 37 CFR 1.78(e) may be filed. See
 37 CFR
 1.78(d)(3)(iii) . Thus, a petition under 37 CFR
 1.78(e) may be filed along with a request for a certificate of
 correction under 35
 U.S.C. 255 and 37 CFR 1.323 in a design patent
 if the required reference to the prior-filed application was not submitted during the
 pendency of the later-filed design application.
 

 Under certain conditions as specified below a
 certificate of correction can be used, with respect to a benefit claim under
 35 U.S.C.
 120 , 121 , 365(c) , or
 386(c) , to correct:
 

 
 (A) the failure to make reference to a prior
 copending nonprovisional application, international application designating the
 United States, or international design application designating the United
 States pursuant to 37 CFR 1.78(d)(2) ; 
 

 (B) an incorrect reference to a prior copending
 nonprovisional application, international application designating the United
 States, or international design application designating the United States
 pursuant to 37 CFR 1.78(d)(2) ; 
 

 (C) the failure to make reference to a prior
 provisional application pursuant to 37 CFR 1.78(a)(3) ; or
 

 (D) an incorrect reference to a prior provisional
 application pursuant to 37 CFR 1.78(a)(3) . 
 

 A. Conditions for Certificate
 of Correction 
 1. Where a benefit claim based upon 35 U.S.C.
 120 to a national application is to be
 asserted or corrected in a patent via a certificate of correction, the
 following conditions must be satisfied:
 
 (A) all requirements set forth in 37 CFR
 1.78(d)(1) must have been met in the application
 which became the patent to be corrected;
 

 (B) it must be clear from the record of the patent and
 the parent application(s) that priority is appropriate (see
 MPEP § 211 et seq. ); and
 

 (C) a grantable petition to accept an unintentionally
 delayed claim under 37 CFR 1.78(e) 
 must be filed, including the petition fee as set forth in
 37 CFR 1.17(m) .
 See MPEP § 211.04 for a
 discussion of the requirements for the petition.
 

 
 

 2. Where a benefit claim based upon 35 U.S.C.
 120 and 365(c) to an
 international application , or 35 U.S.C.
 120 and 386(c) to an
 international design application, is to be asserted or corrected in a patent
 via a certificate of correction, the following conditions must be
 satisfied:
 
 (A) all requirements set forth in 37 CFR
 1.78(d)(1) must have been met in the application
 which became the patent to be corrected;
 

 (B) it must be clear from the record of the patent and
 the parent application(s) that priority is appropriate (see
 MPEP § 211 et seq. );
 

 (C) the patentee must submit together with the request
 for the certificate, copies of documentation showing designation of
 states and any other information needed to make it clear from the
 record that the 35 U.S.C. 120 
 priority is appropriate (see MPEP §
 211 et seq. as to the requirements for
 35 U.S.C. 120 
 priority based on an international application or an international
 design application); and
 

 (D) a grantable petition to accept an unintentionally
 delayed claim under 37 CFR 1.78(e) 
 must be filed, including the petition fee as set forth in
 37 CFR 1.17(m) .
 See MPEP § 211.04 for a
 discussion of the requirements for the petition.
 

 
 
 

 

 Benefit under 35 U.S.C.
 386(c) with respect to an international design
 application is applicable only to nonprovisional applications, international
 applications, and international design applications filed on or after May
 13, 2015, and patents issuing thereon. See MPEP §
 211.01(d) .
 

 
 

 

 Where a benefit claim based upon
 35
 U.S.C. 120 , 121 , 365(c) , or 386(c) is timely
 submitted, a petition under 37 CFR 1.78(e) is not
 required for correcting the benefit claim by changing the relationship of
 the applications (e.g., changing from “continuation” or “divisional” to
 “continuation-in-part” or from “continuation-in-part” to “continuation” or
 “divisional”) whether filed during the pendency of the later-filed
 application or after patent grant. See MPEP §
 211.03 . However, a change in the relationship may
 require comparing the disclosures of the applications which would require
 further examination and thus such a change would not be appropriate via a
 certificate of correction after patent grant. In addition, there is
 significance to the designation of the relationship as “continuation,”
 “divisional,” or “continuation-in-part.” For example, the safe harbor of
 35
 U.S.C. 121 only protects divisional applications, not
 continuation applications or continuation-in-part applications. See
 Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518
 F.3d 1353, 1362, 86 USPQ2d 1001, 1007-08 (Fed. Cir. 2008) and Amgen
 v. Hoffman-La Roche, 580 F.3d 1340, 1352-1354, 92 USPQ2d 1289,
 1298-1300 (Fed. Cir. 2009). Changing the relationship to or from a
 “divisional” has the potential to impact the applicability of the safe
 harbor provision or a nonstatutory double patenting rejection. Note that a
 patentee cannot obtain the safe harbor protection of 35 U.S.C.
 121 against nonstatutory double patenting by amending
 a patent that issued from a continuation-in-part application to recite only
 subject matter disclosed in the parent application and changing the
 relationship to a divisional of the parent application. See In re
 Janssen Biotech, Inc., 880 F.3d 1315, 125 USPQ2d 1525, 1529
 (Fed. Cir. 2018)( “[A] patent owner cannot retroactively bring its
 challenged patent within the scope of the safe-harbor provision by amendment
 in a reexamination proceeding.”); G.D. Searle LLC v. Lupin Pharm.,
 Inc., 790 F.3d 1349, 1355, 115 USPQ2d 1326, 1330 (Fed. Cir.
 2015)(“Simply deleting that new matter from the reissue patent does not
 retroactively alter the nature of the [CIP] application.”). 
 

 

 3. Where a benefit claim based upon
 35
 U.S.C. 119(e) to a prior provisional application is to
 be asserted or corrected in a patent via a certificate of correction, the
 following conditions must be satisfied:
 
 A. all requirements set forth in
 37 CFR 1.78(a)(1) and
 (a)(2) must have been met in the application
 which became the patent to be corrected;
 

 B. it must be clear from the record of
 the patent and the parent application(s) that priority is appropriate
 (see MPEP § 211 et seq. ); and
 

 C. a grantable petition to accept an
 unintentionally delayed claim under 37 CFR
 1.78(c) must be filed, including the petition
 fee as set forth in 37 CFR 1.17(m) .
 See MPEP § 211.04 for a
 discussion of the requirements for the petition.
 

 
 

 
 Except in certain situations, if all the above-stated conditions for
 benefit claims discussed in A.1-3 are satisfied, a certificate of correction can
 generally be used to amend the patent to make reference to a prior application, or to
 correct an incorrect reference to the prior application.
 

 In situations where a petition under
 37 CFR
 1.78 is filed with a request for a certificate of correction
 under 35 U.S.C.
 255 in an issued patent, the petition should not be granted
 where grant of the petition would require further examination. The following
 situations are examples of when further examination would be required: (1) where the
 grant of the petition would cause the patent to be subject to a different statutory
 framework, e.g., the addition of a benefit claim to a pre-March 16, 2013 filing date
 in a patent that was examined under the first inventor to file (FITF) provisions of
 the AIA; (2) where the grant of the petition would result in the claim(s) in the
 patent having a later effective filing date and thus making available more potential
 prior art; and (3) where the grant of the petition would alter the continuity chain
 in a way that may impact patentability, e.g., the altered chain would require
 evaluation of whether the continuity of disclosure requirement is satisfied.
 

 Furthermore, if the grant of the petition under
 37 CFR
 1.78 , which is filed with a request for a certificate of
 correction under 35
 U.S.C. 255 , would have the appearance of extending the patent
 term, the petition should not be granted. For example, in an application that claims
 both domestic benefit and foreign priority, a change to a later filing date in the
 earliest application for which domestic benefit is claimed under 35 U.S.C.
 120 , 121 , 365(c) , or
 386(c) could have the appearance of extending the patent term,
 even though the effective filing date for the claimed invention would not change
 because the foreign priority date would not change. See 35 U.S.C.
 100(i)(1) . This is because a foreign priority date is taken
 into account in determining the effective filing date for a claimed invention under
 the first inventor to file (FITF) provisions of the AIA, but the foreign priority
 date is not taken into account in determining the term of a patent. The maximum term
 of the original patent is fixed at the time the patent is granted, subject to any
 adjustments to the number of days of extension or adjustment. In addition,
 35 U.S.C.
 255 states that the patent, together with the certificate of
 correction, shall have the same effect as if the patent originally issued in that
 corrected form. Therefore, a petition under 37 CFR 1.78 with a certificate of
 correction under 35
 U.S.C. 255 should not be granted where grant of the petition
 would have the appearance of extending the patent term. 
 

 Exemplary situations where a petition under
 37 CFR
 1.78 with a certificate of correction may be appropriate: 
 

 
 (A) Adding or correcting a claim to a prior
 application having a filing date before March 16, 2013 to 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. 
 

 (B) 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 / 1.78 statement (see
 MPEP § 210 , subsection III) is filed concurrently
 with the petition (since the presence of the statement would not result in a
 switch in the statutory framework). 
 

 (C) Adding 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. 
 

 (D) Adding or correcting 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
 inventor to file provisions of the AIA.
 

 
 However, as discussed above, a petition under
 37 CFR
 1.78 with a certificate of correction under 35 U.S.C. 255 
 should not be granted where further examination would be required or the grant of the
 petition would have the appearance of extending the patent term.
 

 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 / 1.78 statement 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).
 

 
 If any of the above-stated conditions is not satisfied or if the
 correction sought would require further examination, the filing of a reissue
 application (see MPEP
 § 1401 - § 1460 ) may be appropriate to pursue
 the desired correction of the patent for benefit claims under 35 U.S.C.
 119(e) , 120 , 121 ,
 365(c) , or 386(c) . It should be noted that a
 certificate of correction under 35 U.S.C. 255 cannot be used to
 remove a benefit claim under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) because further
 examination would be required.
 

 See MPEP §
 216.01 for a discussion of when a claim for priority under
 35 U.S.C.
 119(a)-(d) or (f) can be perfected by certificate of
 correction. 
 

 

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 1400.01-Introduction 

 1401-Reissue 

 1402-Grounds for Filing 

 1403-Diligence in Filing 

 1404-Submission of Papers Where Reissue Patent Is in Litigation 

 1405-Reissue and Patent Term 

 1406-Citation and Consideration of References Cited in Original Patent 

 1407-1409-[Reserved] 

 1410-Content of Reissue Application 
 1410.01-Reissue Applicant and Inventor's Oath or Declaration 

 1410.02-Assignee Consent to the Reissue 

 
 

 1411-Form of Specification 
 1411.01-Certificate of Correction or Disclaimer in Original Patent 

 1411.02-New Matter 

 
 

 1412-Content of Claims 
 1412.01-Reissue Claims Must Be for Same General Invention 

 1412.02-Recapture of Canceled Subject Matter 

 1412.03-Broadening Reissue Claims 

 1412.04-Correction of Inventorship By Reissue 

 1412.05-Correction of Inventorship in a Broadening Reissue Application 

 
 

 1413-Drawings 

 1414-Content of Reissue Oath/Declaration 
 1414.01-Reissue Oath or Declaration in Reissue Application Filed On or After September 16, 2012 

 1414.02-Reissue Oath or Declaration in Reissue Application Filed Before September 16, 2012 

 1414.03-Supplemental Reissue Oath/Declaration 

 
 

 1415-Reissue Application and Issue Fees 
 1415.01-Maintenance Fees on the Original Patent 

 
 

 1416-No Physical Surrender of Original Patent 

 1417-Claim for Priority Under 35 U.S.C. 119(a)-(d) 

 1418-Notification of Prior/Concurrent Proceedings and Decisions Thereon, and of Information Known To Be Material to Patentability 

 1419-1429-[Reserved] 

 1430-Reissue Files Open to the Public and, Notice of Filing Reissue Announced in, Official Gazette 

 1431-1439-[Reserved] 

 1440-Examination of Reissue Application 

 1441-Two-Month Delay Period 
 1441.01-Protest and Pre-issuance Submission in Reissue Applications 

 
 

 1442-Special Status 
 1442.01-Litigation-Related or PTAB Trial-Related Reissues 

 1442.02-Concurrent Litigation or Trial Before the Patent Trial and Appeal Board 

 1442.03-Litigation Stayed 

 1442.04-Litigation Involving Patent 

 1442.05-Court Ordered Filing of Reissue Application 

 
 

 1443-Initial Examiner Review 

 1444-Review of Reissue Oath/Declaration 

 1445-Reissue Application Examined in Same Manner as Original Application 

 1446-1447-[Reserved] 

 1448-Fraud, Inequitable Conduct, or Duty of Disclosure Issues 

 1449-Protest Filed in Reissue Where Patent Is in Interference or Contested Case 
 1449.01-Concurrent Office Proceedings 

 1449.02-Interference in Reissue 

 1449.03-Reissue Application in Derivation Proceeding 

 
 

 1450-Restriction and Election of Species Made in Reissue Application 

 1451-Divisional Reissue Applications; Continuation Reissue Applications Where the Parent is Pending 

 1452-Request for Continued Examination of Reissue Application 

 1453-Amendments to Reissue Applications 

 1454-Appeal Brief 

 1455-Allowance and Issue 

 1456-Reissue Review 

 1457-Design Reissue Applications and Patents 

 1458-1459-[Reserved] 

 1460-Effect of Reissue 

 1461-1469-[Reserved] 

 1470-Public Access to Reissue Applications 

 1471-1479-[Reserved] 

 1480-Certificates of Correction — Office Mistake 
 1480.01-Expedited Issuance of Certificates of Correction - Error Attributable to Office 

 
 

 1481-Certificates of Correction - Applicant’s Mistake 
 1481.01-Correction of Assignees’ Names 

 1481.02-Correction of Named Inventor 

 1481.03-Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits 

 
 

 1482-1484-[Reserved] 

 1485-Handling of Request for Certificates of Correction 

 1486-1489-[Reserved] 

 1490-Disclaimers 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:27