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 priority claims.
Recent amendments to the Patent Act, which are not yet in force, have repealed the provision for correction of clerical errors and replaced it with regulations providing authority to correct, within specified time periods, various errors made by the applicant or patentee and the Patent Office.
Current state
Under the Patent Act, clerical errors in any document at the Patent Office may be corrected at the discretion of the Commissioner. A clerical error is narrowly defined by the courts as an error that has arisen out of the mechanical process of writing or transcribing. Errors that fall outside of this definition cannot be corrected by the Commissioner.
The correction of clerical errors originating from the patentee or applicant requires payment of a fee while no fee is levied for clerical errors originating from the Patent Office.
Proposed new state
Correction of error in a patent application
It will be possible to request the correction of certain errors in the identification and names of applicants and inventors if the corrections are made within the time limits outlined in the proposed Patent Rules. There will be no fee associated with these types of corrections.
Applicant identity: The person who submitted the application will be able to request correction of the identity of the applicant, as long as the error arose from inadvertence or mistake without any deceptive intention and the person who submitted the application provides a statement to that effect. The request will have to be made before the application becomes open to public inspection and before the Commissioner records a transfer.
Inventor identity: It will be possible to request the correction of the identity of an inventor, provided that the request for correction is made before a notice of allowance is sent.
Applicant/Inventor name: It will be possible to request the correction of the name of the applicant or inventor, if that change does not change their identity and the change is requested before payment of the final fee or if the final fee is refunded, on or before the day on which the final fee is paid again.
Original application number: It will be possible to correct the original application number identified in the petition of a divisional application if the applicant requests the correction not later than three months after the presentation date of that divisional application.
Specification or drawings: Any error in the specification or drawings during the application phase may be corrected through the amendment provisions. Obvious errors in the specification or drawings may be corrected after the notice of allowance is sent until the final fee is paid.
Corrections to the priority claim
It will be possible to correct an error in the filing date, name of country or office and/or number in a priority claim during the application phase. However, certain time limits will narrow the availability of the correction mechanism depending on the information in the priority claim being corrected. There will be no fee associated with corrections to the priority claims.
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, 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.
Figure - Text version
The figure contains a decision tree to determine the deadline to submit a correction to the priority filing date. There are 2 boxes where the user determines the later of 16 months from the originally submitted priority date or 4 months from the application filing date. Then the user takes the result of the previous box and combined with another calculation box determines the earlier of that date and the open to public inspection date as per the originally submitted priority date. The user then repeats all of the above calculations for the requested corrected priority date. The final 2 boxes asks the user to determine the earlier of the time limit using the originally submitted priority date and the time limit using the requested corrected priority date. The time limit to make the correction to the priority date is the earlier of the 2 results.
Priority filing country/Office: Upon request, it will be possible to correct an error in the name of a country or office of filing and the number of the previously filed application. The request must be made before payment of the final fee or if the final fee is refunded, on or before it is paid again
Correction of errors in an issued patent
For a limited time after a patent is issued, it will be possible to correct three types of errors:
- Patent Office errors – obvious errors made by the Patent Office in the patent, or in the specification or drawings referenced in the patent
- Errors in the name of the patentee or inventor
- Obvious errors in the specification and drawings
1. Office errors: The Patent Office may correct errors, made by the Commissioner, in the patent, 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 that something else was intended and nothing else could have been intended. This section is intended for the Office to correct errors it has made in issued patents for a limited period of time following the patent's issue. No fee is required for obvious errors made by the Commissioner.
These corrections may only be made within six months after issue, therefore patentees will be encouraged to identify and communicate any Office errors in their issued patent as soon as possible after grant to allow sufficient time for the Patent Office to make the correction.
2. Errors – Name of patentee or inventor: Patentees will be able, within six months of the patent's issue, to request correction of errors in the name of patentee or the inventor. The actual correction may be made after the six month period, so long as the request is made before the time limit. The correction in the patentee or inventor name must not change the identity of the patentee or inventor. A fee in the amount of $200.00 will be required to correct this error.
3. Obvious errors – Specification or drawings: Patentees will be able, within six months of the patent's issue, 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 nothing else could have been intended other than the correction. The actual correction may be made after the six month period, so long as the request is made before the time limit. A fee in the amount of $200.00 will be required to correct this error.
Content of requests to correct errors (not including office errors)
The proposed amendments specify the content for a request to correct errors. No content is specified for requests to correct Office errors, though patentees will be encouraged to identify the patent, the error and any other pertinent details in their request.
The correction request for 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.
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.
For a complete understanding of this topic please consult the Bill C-43 and Bill C-59 legislative amendments not in force in the Patent Act and the public consultation draft of proposed amendments to the Patent Rules available on our website.
References:
Proposed patent rules:
- Corrections – Sections 104-112
- Corrections – error in priority filing date – subsection 73(4)
- Corrections – error in priority name of country/office or number – Subsection 73 (5)