Attachment 31 - CofC_manual_PaDaCap_2019.docx

CERTIFICATES OF CORRECTION GUIDELINES

FOR PATENT DATA CAPTURE CONTRACTOR

Office of Data Management Office of Patent Information Management U.S. Patent and Trademark Office

TABLE OF CONTENTS

Section_ONE. Reference Links

Section_TWO. Overview

Section_THREE. Composition of Certificate of Correction

Section_FOUR. Exception Processing for Certificate of Correction When Patent’s Lengthy Table Section Was Not Published on PSIPS

Section_FIVE. Certificate of Correction That Supersedes Earlier Certificate of Correction

Section_SIX. Certificate of Correction That Supersedes and Vacates Earlier Certificate of Correction

Section_SEVEN. Certificate of Correction That Reprints the Front Page and/or One, Some, or All Drawings of Patent or Reexamination Certificate

Section_EIGHT. Certificate of Correction That Reprints the Entire Patent or Reexamination Certificate

Section_NINE. Certificate of Correction To Correct Assignee

Section_TEN. Certificate for Inventorship Correction

Section_ELEVEN. Disclaimer and/or Dedication

Section_TWELVE. Export of Files from USPTO to PaDaCap Contractor

Section_THIRTEEN. Import of Files from PaDaCap Contractor to USPTO

Section_FOURTEEN. Certificate of Correction for Patent Trial and Appeal Board Certificate

Section ONE Reference Links

For the patent LAWS (35 U.S.C.) go to www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf.

For the patent RULES and REGULATIONS (37 CFR) go to www.uspto.gov/web/offices/pac/mpep/consolidated_rules.pdf.

For the MPEP go to www.uspto.gov/web/offices/pac/mpep/index.htm.

For Yellow Book go to www.uspto.gov/products/Patent-Images-TIFF-Documentation.pdf

Section TWO Overview

The COCIN document is the request for a Certificate of Correction, and this request is normally on Form PTO-1050 or Form PTO/SB/44 but may be in the form of a request letter. The request usually is generated by the attorney of record or the patent applicant, and asks that the USPTO correct a printing error made in an issued patent (utility, plant, design, reissue) or reexamination certificate or even an earlier Certificate of Correction (see Section_FIVE. Certificate of Correction That Supersedes Earlier Certificate of Correction).

A request for a Certificate of Correction is made because one of three things has happened:

(i) the printing error was caused by a mistake made by the USPTO or one of its contractors (below see 37 CFR 1.322, Certificate of Correction of Office mistake),

(ii) the printing error was caused by a mistake made by the applicant (below see 37 CFR 1.323, Certificate of Correction of applicant’s mistake), or

(iii) a combination of both.

If it is determined that the printing error was caused by a mistake made by the USPTO or one of its contractors, then no fee is required. However, if the printing error was caused by a mistake made by the applicant, then the fee set forth in 37 CFR 1.20(a) is required.

The COCIN document is processed in the Certificates of Correction Branch, Deliverables Inspection Division, Office of Data Management. A Certificates of Correction Branch legal instruments examiner (LIE) decides the request, and a Certificates of Correction Branch team leader approves the decision. NOTE: Some requests require approval of the Technology Center

If the request is approved, the certificate is prepared by the Certificates of Correction Branch, exported to the PaDaCap contractor, and delivered by the PaDaCap contractor to the USPTO on the Tuesday issue date in image format (Yellow Book). NOTE: As of this writing, Certificates of Correction are images only, and are not delivered in Red Book (text-searchable) format.

The Certificate of Correction in the patent’s Image File Wrapper is given document code COCOUT.

Section THREE Composition of Certificate of Correction

These composition requirements are effective as of January 5, 2010.

The format of the Certificate of Correction will be as described below:

No border.

· Margins:

top margin of at least .375 inch left margin of at least .375 inch right margin of at least .750 inch bottom margin of at least .750 inch

If possible, the extra line space between the signature and the name/title field should be removed.

The USPTO Director’s “Signed and Sealed” block, including the certificate date, the Director’s signature, etc., will appear on the sole or first page of the Certificate of Correction. That is, the “Signed and Sealed” block will appear on Page 1 even when the Certificate of Correction has more than one page.

Each and every second or succeeding page of a Certificate of Correction will show a header.

one-line header for second/succeeding page that is drawing sheet or is page of reprinted patent

When the second/succeeding page of the Certificate of Correction is a drawing sheet or is a page of a reprinted patent—that is, a sheet or page that already shows the patent number—then the second/succeeding page will show a one-line header in 12-point Times New Roman in accordance with the following example:

two-line header for all other second/succeeding pages

All other second/succeeding pages of the Certificate of Correction will show a two-line header in 12-point Times New Roman in accordance with the following example:

When appropriate, the sentence “This certificate supersedes the Certificate of Correction that issued ________.” or the like will appear before the “Signed and Sealed” block on the sole or first page.

The mockup below shows the use of the one-line header for second or succeeding page when the second or succeeding page is a drawing sheet.

See the next page for an illustration of a one-page certificate. Please note that the seal in the illustration is for illustrative purposes only and is not to be supplied by the PaDaCap contractor.

Following the illustration are examples of actual certificates of correction:

correction of a utility patent (8,617,590 B2) correction of a plant patent (PP23,847 P3) correction of a design patent (D693,599 S) correction of a reissue patent (RE44,253 E) correction of a reexamination certificate (7,211,319 C2)

Section FOUR Exception Processing for Certificate of Correction When Patent’s Lengthy Table Section Was Not Published on PSIPS

When it comes to the attention of the Office of Data Management (ODM) that a patent Grant’s specification did not contain a page-wide LENGTHY TABLES statement showing the PSIPS URL, and that the lengthy table section in XML format was not attached to the Grant Red Book deliverable, with the consequence that the lengthy table section was never loaded onto PSIPS, the following exception processing will be performed:

(A) ODM Data Operations Division’s Data Content Branch will (1) obtain the Artifact Folder containing the compact disc(s) on which the applicant submitted the lengthy table section and (2) provide the ODM Deliverables Inspection Division and its Certificates of Correction Branch with suggested wording for an Office-initiated Request for Certificate of Correction. For example:

In the Specification:

In Columns 81 and 82, please insert the following page-wide LENGTHY TABLES statement so that it immediately precedes the page-wide SEQUENCE LISTING statement:

(B) ODM Deliverables Inspection Division and its Certificates of Correction Branch will send the Office-initiated Request for Certificate of Correction to the ODM Data Operations Division’s Data Content Branch.

(C) ODM Data Operations Division’s Data Content Branch will prepare an e-mail addressed to the PaDaCap contractor and will forward the e-mail to the Contracting Officer’s Technical Representative (COTR). This e-mail will describe the steps of the exception processing, and the e-mail will include as an attachment the Request for Certificate of Correction.

(D) The following actions will be performed concurrently:

Contracting Officer’s Technical Representative (COTR) will forward the e-mail (with Request for Certificate of Correction attached) to the PaDaCap contractor.

ODM Data Operations Division’s Data Content Branch will dispatch the Artifact Folder to the PaDaCap contractor.

(E) PaDaCap contractor will deliver to the USPTO a corrected Grant Red Book for the patent with the lengthy table section attached in XML format. NOTE: The PaDaCap contractor will directly inform the USPTO Electronic Information Products Division that the delivery is being made. The corrected Grant Red Book deliverable will serve primarily as a vehicle for providing the lengthy table section to PSIPS.

(F) PSIPS will load the lengthy table section.

(G) ODM Data Operations Division’s Data Content Branch via e-mail will inform the PaDaCap contractor that PSIPS has completed the loading of the lengthy table section.

(H) PaDaCap contractor will issue the Certificate of Correction. NOTE: The Certificate of Correction will not include a CD containing the lengthy table section in HTML format, and such a CD will not be delivered to the Office of Public Records. Taken together with the Grant Yellow Book version of the patent, the image-only Certificate of Correction will provide the LENGTHY TABLES statement that alerts the public to the presence of the lengthy table section on PSIPS.

Section FIVE Certificate of Correction That Supersedes Earlier Certificate of Correction

The original Certificate of Correction contains one or more printing errors (misspellings, missing pages, missing text, etc.). The applicant requests that these errors be corrected, and—in accordance with the processing described below—the Office issues a second Certificate of Correction that corrects the printing errors and supersedes (replaces) the original Certificate of Correction.

Sometimes the need for superseding a certificate is recognized by the Certificates of Correction Branch without the filing of a request from the applicant—for example, when a two-page certificate is issued with only one page and must be superseded by a certificate that shows both pages.

The Certificates of Correction Branch will mark the corrections in red on a copy of the original Certificate of Correction. The PaDaCap contractor will follow these markings.

On the line above the Director’s signature overlay at the bottom of the sheet, the following statement is inserted by the Certificates of Correction Branch:

This certificate supersedes Certificate of Correction issued ___ __, ___.

(The date after the word issued is the date the original Certificate of Correction was signed and sealed.)

The Certificates of Correction Branch will line through the Director’s signature overlay. This alerts the PaDaCap contractor that their records will already show a Certificate of Correction for this patent.

Section SIX Certificate of Correction That Supersedes and Vacates Earlier Certificate of Correction

When the superseding certificate vacates a certificate that issued with subject matter that should not have been approved, the superseding certificate will show the following statement:

This certificate supersedes Certificate of Correction issued _____ __, ____. The certificate is vacated since ________________ was not granted for this patent number. The Certificate of Correction should not have issued.

(The date after the word issued is the date the original Certificate of Correction was signed and sealed. After the word since, the kind of petition that was not granted will be identified—for example, petition to correct assignee.)

When the superseding certificate vacates a certificate that issued with the incorrect patent number in the heading, the superseding certificate will show the following statement:

This certificate supersedes Certificate of Correction issued _____ __, ____. The certificate is vacated since Certificate of Correction was not granted for this patent number. The Certificate of Correction should not have been issued.

(The date after the word issued is the date the original Certificate of Correction was signed and sealed.)

Section SEVEN Certificate of Correction That Reprints the Front Page and/or One, Some, or All Drawings of Patent or Reexamination Certificate

When the printing errors on the patent’s (or reexamination certificate’s) front page—also called the title page—are numerous, the Certificate of Correction will show a corrected reprint of the entire front page.

NOTE: Because some fields of data (for example, reference citations) are sometimes too long to fit on one sheet, it is possible for a front page (title page) to consist of more than one sheet.

Sometimes the correction requires the reprinting of one, some, or all drawings.

A Certificate of Correction as described above will consist of the following:

· Page 1 will show the Certificate of Correction heading, signature block, etc., but the part of the page where the corrections would be detailed will instead show a statement that the previous title page of the patent (or reexamination certificate) is deleted in its entirety and replaced by the attached substitute title page.

· The second or succeeding page(s) will show the one-line header

CERTIFICATE OF CORRECTION (continued) Page 2 of 2 and the content of the second or succeeding page(s) will be the entirety of the reprinted front page.

See Section_THREE. Composition of Certificate of Correction.

The example shown on the next several pages shows a Certificate of Correction that includes reprinted drawings plus—inasmuch as the representative drawing on the front page needed to be corrected—a reprinted front page.

last page of Certificate of Correction

Section EIGHT Certificate of Correction That Reprints the Entire Patent or Reexamination Certificate

When the printing errors on the patent (or reexamination certificate) are numerous—for example, the specification belonging to another application was printed, or the wrong claim set was printed—the Certificate of Correction will show a corrected reprint of the entire patent (or reexamination certificate).

Before the Certificates of Correction Branch exports the certificate to the PaDaCap contractor, the Office of Data Management will work with the PaDaCap contractor to proofread and otherwise work to ensure the accuracy of the reprinted patent (or reexamination certificate).

Such a Certificate of Correction will consist of the following:

· Page 1 will show the Certificate of Correction heading, signature block, etc., but the part of the page where the corrections would be detailed will instead show a statement that the previous patent (or reexamination certificate) is deleted in its entirety and replaced by the attached substitute patent (or reexamination certificate).

· The remaining pages will show the one-line header for second and succeeding pages and the content of the remaining pages will be the entirety of the reprinted patent (or reexamination certificate).

See Section_THREE. Composition of Certificate of Correction.

last page of Certificate of Correction

Section NINE Certificate of Correction To Correct Assignee

See MPEP 1481.01 Correction of Assignees’ Names. When the applicant files Form PTOL-85B (issue fee transmittal), he or she is asked to use Item 3 of the form to provide the name(s) and residence(s) of the assignee(s), and this assignee information is printed on the front page of the patent. (Assignment records are not used to print assignee information on the front page of the patent.)

After issue fee payment, if the applicant wants to change the assignee name(s) that he or she provided on the Form PTOL-85B, or wants to add an assignee name that he or she omitted from the Form PTOL-85B, the applicant must file a request for correction that will be processed by the Certificates of Correction Branch. This means the patent grant will show the assignee data from the PTOL-85B, and the corrected assignee data will appear on a Certificate of Correction. (At one time a petition was required in this situation, but a petition is no longer required.)

The request for correction of the assignee name(s) must include:

· statement “that the assignment was submitted for recordation … before issuance of the patent”

· request for a Certificate of Correction plus the fee set forth in 37 CFR 1.20(a)

· processing fee set forth in 37 CFR 1.17(i)

NOTE: This is not to be confused with a Certificate of Correction that issues because the assignee information was printed incorrectly as the result of an Office mistake.

Section TEN Certificate for Inventorship Correction

Such a certificate issues after a petition to correct inventorship under 37 CFR 1.324 has been reviewed and granted by the Supervisory Primary Examiner of the assigned Art Unit.

The Certificates of Correction Branch prepares the certificate using the following format:

UNITED STATES PATENT AND TRADEMARK OFFICE

CERTIFICATE

Patent No. X,XXX,XXX Patented: XXXX XX, XXXX

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, through error and without any deceptive intent, improperly sets forth the inventorship.

Accordingly, it is hereby certified that the correct inventorship of this patent is: [examples below]

Signed and Sealed this [examples below] Day of XXXX, 20XX.

XXXXXXX X. XXXXXXX

Supervisory Patent Examiner Art Unit XXX Technology Center XXXX

Examples of inventor names:

Suzanne J. Hantke, Plainview, NY (US)

John J. Jones, Hayne, NC (US)

Pierre L’Enfant, Paris (FR)

Examples of spelled-out ordinal numbers between “this” and “Day”:

Twenty-seventh

Third

Sixteenth

On the Tuesday of issue, the PaDaCap contractor delivers the certificates to the USPTO in Yellow Book format.

Section ELEVEN Disclaimer and/or Dedication

A statutory disclaimer happens after the patent has been granted. The patentee may disclaim (give up legal rights to) one or more claims, either because of a lawsuit or because the claim(s) are thought to be invalid. When this happens, any remaining claims are still valid. Also “any patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted.”

Such a disclaimer must be

- signed by the patentee or attorney/agent of record,

- identify the claim(s) being disclaimed and/or specify the portion of the term that is being disclaimed or dedicated to the public,

- “state the present extent of patentee’s ownership interest in the patent,”

- pay the fee specified in 37 CFR 1.20(d).

Three types of disclaimer/dedication notices:

Disclaimer disclaims particular claim(s), all claims, term of patent, or the term of the patent subsequent to the expiration of the term of another patent.

Disclaimer and Dedication disclaims and dedicates all claims and the remaining term of the patent or the entire term of the patent.

Dedication dedicates the patent to the public.

On the Tuesday of issue, the PaDaCap contractor delivers the disclaimers and dedications to the USPTO in Yellow Book format.

Section TWELVE Export of Files from USPTO to PaDaCap Contractor

Background

It has been a USPTO practice to print SB44/1050s prepared by Legal Instruments Examiners (LIEs) in the Certificates of Corrections (CofC) Branch and place them for a mail courier to pick up from Randolph Square, Arlington, VA, and deliver to the PaDaCap contractor’s location at Horsham, PA.

New Process

· Each work day the USPTO will place workload PDF files in a shared folder connected to the Omaha server for secure and immediate transfer of files. Multiple PDFs—approximately eight to twelve, each with multiple 1050s—will be exported at varying intervals of time each day. Such a PDF will not be enclosed in a ZIP file.

· These PDF files will be multiple-workload files. That is, each Legal Instruments Examiner (LIE) in the CofC Branch will submit his or her daily workload. The file name of each PDF will be the date of export in ddmmyy format, followed by the initials of the LIE, followed by 1050.pdf. For example, a PDF file exported by LIE Theodore Roosevelt on 18 August 2015 would be given this file name:

180815TR1050.pdf

If an LIE exports a second or succeeding PDF on a given day, 1050 in the file name will be followed by W and the appropriate cardinal number, such as 2 for the second PDF file exported by the LIE on that same day. For example, the second PDF file exported by Theodore Roosevelt on 18 August 2015 would be given this file name:

180815TR1050W2.pdf

· Each workload PDF file will have a cover page with the heading *IFW Certificate of Correction* and with a box for the export date and a box for the LIE’s name, plus columns for patent numbers, application numbers, and numbers of pages. The cover page will be prepared by the LIE and scanned as the first page of the PDF file, and the succeeding pages will be the 1050 forms identified on the cover sheet, presented in the order in which the LIE entered them onto the cover sheet.

Once the workload PDF file is received by the PaDaCap contractor, the contractor will verify that the summary of items on the cover page matches with the number of 1050s following that cover page and also will check for duplicates or other discrepancies. The PaDaCap contractor will reply in 1 to 5 business days via e-mail (CoC_mailbox@uspto.gov and CustomerServiceCoC@uspto.gov) with a summary report on the workload 1050s that were received.

What follows are examples of cover pages as described above.

Section THIRTEEN Import of Files from PaDaCap Contractor to USPTO

Background

It has been a USPTO practice to receive final deliverable Certificates of Corrections on a weekly basis in paper printed form from the PaDaCap contractor (delivered to Randolph Square, Arlington, VA). These certificates are then verified by the USPTO and mailed to the applicants/patent owners.

New Process

· Each week the USPTO will receive the Certificates of Correction in PDF format via a shared folder connected to the Omaha server for secure and immediate transfer of files. The one PDF will contain all of the Certificates of Correction for a given issue. This PDF deliverable will not be enclosed in a ZIP file. The file name of the weekly PDF will consist of the issue date in ddmmyy format, followed by COCissue.pdf. For example, for issue date 6 October 2015:

061015COCissue.pdf

If PaDaCap contractor exports a second or succeeding PDF with same issue date, file name will get appended with the appropriate cardinal number, such as 2 for the second PDF file exported by the PaDaCap contractor for the same issue date. For example, the second PDF file exported by PaDaCap contractor for issue date of 6 October 2015 would be given this file name:

061015COCissue2.pdf

NOTE: The PaDaCap contractor will send an e-mail (CoC_mailbox@uspto.gov and CustomerServiceCoC@uspto.gov) alerting the USPTO to the placement of the weekly PDF deliverable on the Omaha server.

· USPTO will print these Certificates locally and will assemble them for mailing to the applicants/patent owners.

Section FOURTEEN Certificate of Correction for Patent Trial and Appeal Board Certificate

In DATA ENTRY MANUAL FOR NON-UTILITY PATENT DOCUMENTS, OTHER THAN PATENT APPLICATION PUBLICATIONS, see Section XIX. PATENT TRIAL AND APPEAL BOARD CERTIFICATES.

Example of PTO/SB/44 requesting Certificate of Correction to correct PTAB certificate:

In the position of the PATENT NO., the Certificate of Correction will show the PTAB certificate number, consisting of the original patent’s number (see formats below) with the appropriate PTAB certificate kind code:

Post-Grant Review Certificate with kind code J

Inter Partes Review Certificate with kind code K

Derivation Certificate with kind code O

In the position of the APPLICATION NO. the Certificate of Correction will show the application number of the application from which the original patent issued.

The DATED line will show the issue date of the PTAB certificate.

Mockup of masthead of Certificate of Correction correcting a PTAB certificate:

UNITED STATES PATENT AND TRADEMARK OFFICE

CERTIFICATE OF CORRECTION

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