By Robert Dailey --
Section 255 of the Patent Act provides a mechanism for correcting typographical or minor errors in an issued patent.
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.
In Superior Fireplace Co. v. Majestic Products Co. (Fed. Cir. 2001), the Federal Circuit held (over the dissent of Judge Dyk) that additional requirements apply when the correction would result in any broadening of the claims. These additional limitations include the following:
- Broadening is evaluated by a text-to-text comparison of the pre-correction claim text to the post-correction claim text, i.e., without consideration of whether the prosecution history demonstrates that the applicant and the PTO had agreed to a narrower meaning of the pre-correction claim term;
- For mistakes "of minor character," the PTO may issue no Certificates that would broaden the claim scope;
- For mistakes "of a clerical or typographical nature," the PTO may only issue Certificates that broaden the claim scope when one of skill in the art, having the intrinsic record at his disposal, would (1) recognize that the mistake has occurred; and (2) know from the intrinsic record how to correct that mistake.
Judge Dyk issued a dissent in the case. The majority articulated these additional limitations out of a fear that patentees could use Certificates of Correction to obtain changes that would be unavailable under the Reissue provisions of Section 251. Judge Dyk showed how Sections 255 and 251 could be harmonized without reading the additional limitations into the statutory text.
In the 2007 case of Central Admixture Pharmacy Services, Inc. v. Advanced Cardiac Solutions, P.C., the Federal Circuit had the opportunity to revisit its Superior Fireplace holding. In the original patent, the patentee had claimed concentration ranges in terms of osmolarity, but had intended to claim the ranges in terms of osmolality. The PTO issued the Certificate of Correction, which resulted in a 2% downward shift in the claimed concentration ranges.
But the Federal Circuit chose to stand by its precedent. Because the scope of the corrected claim was not entirely encompassed by the pre-correction claim (i.e., 2% shift), the Court held that this constituted broadening. Thus, the Superior Fireplace limitations apply. In this instance, one of skill in the art would not necessarily have recognized that use of "osmolarity" was a mistake, even if claiming concentrations in terms of "osmolality" may have made more sense. Because the mistake was not apparent on its face, the patentee could not make the change.
Superior Fireplace remains good law, as the Supreme Court has declined to hear the appeal. Therefore, practitioners are probably advised to avoid using Certificates of Correction for making changes to the claim language. "Broadening" does not mean that the whole claim is broader; the claim just needs to read on one embodiment that was not previously encompassed. And when claims are broadened, courts will only uphold a Certificate of Correction when it corrects blatant typographical errors. So, if you've claimed a concentration range in terms of "miles," use a Certificate of Correction. Otherwise, use a Reissue.
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