From time to time a patent application or a patent can contain errors due to an oversight by the applicant/patentee or the Patent Office. The most common errors in patent applications are the identification of applicants and inventors, and information regarding the request for priority. The Patent Office encourages clients to review all documents prior to submission to ensure that they are error free.
This document focuses on errors that can be corrected in a patent application or granted patent. The types of errors and how to request a correction are outlined for applications and patents.
Note that corrections are distinct from other provisions which allow amendments to the specification and drawings, recordal of transfers of rights or changes of name.
2.0 What can be corrected in a patent application?
Certain errors in patent applications and related documents submitted during the application stage may be corrected as provided for in the Patent Rules. Please note that no fee is required for correcting an error during the application stage.
2.1 Applicant name and identity
The person who submitted the application to obtain a filing date or for PCT national phase entry will be able to request correction of the name of the applicant, as long as the error arose from inadvertence, accident or mistake without any fraudulent or deceptive intention and the person who submitted the application provides a statement to that effect.
For a regularly filed application the request will have to be made before the earlier of when the application becomes open to public inspection and the day on which the Commissioner receives a request to record a transfer under section 49 of the Patent Act.
(section 104 of the Patent Rules)
For a PCT national phase application the request must be submitted before the earlier of:
- The later of:
- three months from the date that the application enters national phase; and
- if the Commissioner sends a notice under subsection 155(7) of the Patent Rules (requiring the person who requested that the application entered national phase to establish that they are either the applicant or the legal representatives of the applicant named in the international application) before the end of the three months from the date that the application enters the national phase, the day on which the three month period after the date of the notice sent under subsection 155(7) expires
- the Commissioner receives a request to record a transfer under section 49 of the Patent Act.
(subsection 155(6) of the Patent Rules)
2.2 Inventor identity
When an inventor was incorrectly identified for a patent application, it may be corrected by a simple request from the applicant if it is submitted before a notice of allowance is sent.
(section 105 of the Patent Rules)
2.3 Applicant/Inventor Name
Errors in the names of applicants or inventors in a patent application, if it does not result in a change of identity, may be corrected by a simple request from the applicant if it is submitted on or before the payment of the final fee, or if the final fee is refunded, on or before it is paid again.
(section 106 of the Patent Rules)
2.4 Priority filing date
If the patent application has not yet been opened to public inspection and the applicant has not requested that it be opened to public inspection early, then it may be possible to request the correction of an error in the filing date of the priority application submitted under section 28.4(2) of the Patent Act, if that request is made before the earlier of the uncorrected date and the corrected date on which the application would be open to public inspection.
(subsection 73(4) of the Patent Rules).
2.5 Priority filing country/office or number
Upon request, it is possible to correct an error in the name of a country or office of filing and the number of the priority application. The request must be made on or before payment of the final fee or if the final fee is refunded, on or before it is paid again.
(subsection 73(5) of the Patent Rules)
2.6 Specification or Drawings
Any error in the specification or drawings during the application phase may be corrected through the amendment provisions up until a notice of allowance is sent (section 102 and subsection 100(1) of the Patent Rules).
After a notice of allowance is sent and on or before the payment of the final fee, it is possible to amend the specification and drawings only to correct obvious errors. In these circumstances, it must be obvious based on the specifications and drawings contained in the application on the day the notice of allowance was sent that something other than what appears was intended AND that nothing other than the proposed amendment could have been intended. There is no fee for this correction. The manner of submitting an amendment should be in compliance with section 102 of the Patent Rules.
(subsection 100(2) of the Patent Rules)
3.0 Correction of identity vs correction of a name
Where a person is incorrectly identified, either as the inventor or applicant, there is a small window in which the identity can be corrected when the error was due to inadvertence or mistake without any intention to mislead. In other words, when the person named as applicant has no rights to the invention or the person named as inventor was not an inventor, the Patent Rules provide mechanisms to replace the incorrect individual with the correct applicant or inventor.
For example, Bob was named as an applicant at time the application was filed but Bob has no rights to the invention. The person who submitted the application incorrectly identified Bob when he should have identified John as the applicant.
A correction of name is meant to correct errors that do not change the identity such as incorrect spellings. For example, Bob was named as the applicant at the time the application was filed and he has the rights to the invention. Bob is a nickname and he should have been identified as Robert.
Please note that a correction of name is different than a change of name. For more information on changes of name, please see the consultation MOPOP document on Transfers.
4.0 Content of requests to correct errors in a patent application
All requests for corrections of a patent application must comply with the requirements for submitting written communications to the Commissioner. Every request must include the application number, name of the applicant(s), a clear request for correction of an error and any additional information that may be needed.
5.0 Effect of correction of an error in a patent application
The correction of an error in a patent application will result in updating office records and the requester will be informed by letter that the correction has been made.
6.0 What can be corrected in an issued patent?
Certain errors in granted patents can be corrected for a limited time after they are issued. Details of which errors can be corrected and the requirements for obtaining these are described below.
6.1 Commissioner's errors:
The Patent Office may correct errors, made by the Commissioner in the patent or in the specification or drawings referenced in the patent within six months after the issue of the patent. In order for the Patent Office to make the correction, it must be obvious based on the documents on file in the Patent Office that something else was intended and nothing else could have been intended. No fee is required for the correction of obvious Office errors.
The Patent Office has a rigorous quality process to ensure that the patents it issues are free of errors though they do happen occasionally. Though the Commissioner can correct these errors without a request from the patentee, the Patent Office recommends that patentees review their granted patent upon receipt and signal any errors to the Commissioner immediately since the time to make these corrections is short (six months after the patent is issued).
All requests for corrections of Commissioner's errors in a granted patent must comply with the requirements for submitting written communications to the Commissioner. Every request must include the patent number, name of the patentee(s), a clear request for correction of an error and any additional information that may be needed.
(subsection 108(1) of the Patent Rules)
6.2 Errors – name of patentee or inventor
Patentees are able, within six months of the patent's issuance, to request correction of errors in the name of patentee or the inventor. The correction by the Office may be made after the six month period, so long as the request is submitted before the expiry of the time limit. The correction in the patentee or inventor name must not change the identity of the patentee or inventor.
(paragraph 110(1)(a) of the Patent Rules)
6.3 Obvious errors – specification or drawings
Patentees are able, within six months of the patent's issuance, to request correction of obvious errors in the specification or drawings if it would have been obvious to a person skilled in the art that something else was intended than what appears AND that nothing else could have been intended other than the correction. A fee in the amount of $200.00 is required to correct this error.
(paragraph 110(1)(b) of the Patent Rules)
7.0 Content of requests to correct errors in a patent (not including Office Errors)
The request for correction of errors must contain:
- an indication to the effect that a correction of an error is requested;
- the patent number;
- the correction to be made;
- new pages if required; and
- the fee in the amount of $200.00.
(subsection 110(2) of the Patent Rules)
If the patentee does not comply with the formal requirements and/or pay the fee, the Commissioner will send a notice requesting that the patentee submit the required information and/or fee within three months of the notice. If the required information and/or fee are not received within that time, the request for correction will be considered never to have been made.
(subsection 110(3) of the Patent Rules)
- The grant copy of a patent should never be submitted to the Patent Office when requesting a correction.
- The fee is levied for the processing of the request by the Patent Office and does not depend on the acceptance or refusal of the correction.
8.0 Effect of error correction in a patent
The correction of an error in the patent will result in a certificate setting out the correction. The correction has retroactive effect and will be considered to have been made on the date on which the patent was issued.
(section 112 of the Patent Rules)