Patent Corrections: New Provisions Expected This Year

The new Patent Rules (the “Rules”) will introduce the correction of “obvious errors”, thereby replacing the current provisions of the correction of “clerical errors”.

The current patent regime provides that clerical errors that have arisen “out of mechanical process or writing or transcribing” may be corrected at the discretion of the Commissioner. However, the Commissioner does not have the authority to correct errors falling outside of this narrow definition. Under the new Rules, there will be new provisions for the correction of obvious errors for patent applications, priority claims, and for errors in an issued patent.

1) Error In Patent Application

During the application stage, the proposed Rules would allow for the correction of errors in the name or identity of the applicant or inventor within a certain time limit:

 

Type of Error

 

Identity

(i.e. the wrong person is named)

Name

(i.e. a typo)

  Applicant

Request for correction must be submitted before the day the application is published or before the Commissioner records a transfer. Request for correction must be submitted before the day on which the final fee is paid.

Inventor

Request for the correction must be submitted before the day on which a notice of allowance is sent.

Request for correction must be submitted before the day on which the final fee is paid.

Applicants will also be able to request a correction of original application number no longer than three months after the presentation of a divisional application. Moreover, obvious errors in specification or drawings will be possible after the notice of allowance is sent, up until the final fee is paid. There will be no fee in the request for the correction of these obvious errors in the application stage.

2) Correction To The Priority Claim

The new Rules would make it possible to correct an error in the filing date, name of country or office and/or number in a priority claim at no fee. These corrections will, however, depend on certain time limits. A correction in the priority filing date may be possible if the patent application has not yet been opened to public inspection (and the applicant did not request an early public inspection), and if the request is made before the earlier of 1) the uncorrected date and 2) the corrected date on which the application would be open to public inspection. A correction in the priority filing country or Office will be possible if the request is made before the payment of the final fee.

3) Corrections Of Errors In An Issued Patent

Once the patent is issued, it will be possible to correct three types of errors for a limited period of time: 1) patent Office errors; 2) errors in the name of the patentee or inventor; and 3) obvious errors. Obvious errors made by the Commissioner in the patent or in the specification and drawings will have to be corrected within six months of the issuance of the patent, at no fee. Corrections in the name or the patentee or inventor or obvious errors in the specification or drawings will have to be made within six months of the issuance of the patent, with a fee (expected to be $200).

While the new Rules will allow for more corrections, patentees should be aware that corrections for an error made by the Patent Office in an issued patent are also subject to a time limit. Patentees therefore carry the burden to find errors originating from the Patent Office within six months of the issuance of the patent. Patentees and filers should therefore consult a PCK IP professional to establish a strategy in order to protect their invention. For more information, please contact Stephen Perry.

Click here to obtain more general information on the new Rules expected to come into force later in 2019.