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IP Alert: Federal Circuit Says PTAB Too Strict in Refusing Certificate of Correction

October 8, 2019

On October 1, in Honeywell Int’l Inc. v. Arkema Inc., the Federal Circuit provided significant guidance for parties seeking a Certificate of Correction in Patent Trial and Appeal Board (PTAB) proceedings. The court summarized the steps for seeking a Certificate of Correction in a post-grant review (PGR) proceeding and identified the appropriate standard of review that the PTAB must apply when considering motions for leave to seek a Certificate of Correction.

A Certificate of Correction is a document issued to correct certain types of errors in a patent. Sometimes these errors are of a typographical or clerical nature, but in other cases the errors can have a substantive effect on the patent. Under 35 U.S.C. § 255, patentees may petition the USPTO Director to issue a Certificate of Correction to correct an issued patent. The patentee must show that the mistake was of “minor character” and “occurred in good faith.” This statute applies generally to all patents and is not specific to proceedings in the PTAB.

Honeywell sought to correct a mistake in the chain of priority listed on the face of its patent after the PTAB instituted two PGR proceedings. Honeywell’s proposed correction was to include additional patent applications in the priority chain to confer a different priority benefit and therefore render the patent ineligible for post-grant review. Arkema opposed, arguing that allowing this correction would be prejudicial. After holding two telephone conferences, the PTAB refused to authorize Honeywell to file a motion for leave. The PTAB explained that Honeywell failed to show that the requirements of section 255 had been met.

On appeal, the Federal Circuit held that the PTAB abused its discretion by requiring that Honeywell show that the requirements of section 255 have been met before authorizing Honeywell to file a motion for leave. The court noted that section 255 authorizes the Director, not the PTAB, to determine whether a mistake in an issued patent is of “minor character” or “occurred in good faith.” Significantly, the PTAB itself has no authority to determine whether the patentee is or is not entitled to a Certificate of Correction. That authority is delegated by statute to the Director, who has delegated this authority to the Office of Data Management.

The court held that when considering such a motion the PTAB must determine “whether there is sufficient basis supporting Patent Owner’s position that the mistake may be correctable.” The USPTO has previously allowed patentees to correct priority errors via a Certificate of Correction, so the court held that it was an error for the PTAB to have refused to grant Honeywell’s motion. The court therefore vacated the PTAB’s decision and remanded, instructing the PTAB to authorize Honeywell to file a motion for leave.

The court specified the three procedural steps that an applicant must take under these circumstances: (1) Seek authorization from the PTAB to file a motion for leave, as is required for all motions. (2) If authorization is granted, file a motion for leave with the PTAB so the patentee can seek a Certificate of Correction. (3) If motion is granted, petition the Director for a Certificate of Correction.

This decision makes it clear that the Director, not the PTAB, decides the merits of a patentee’s petition for a Certificate of Correction during a post-grant review proceeding.

For more information on this holding, please contact Fitch Even partner David A. Gosse.

Fitch Even law clerk Jacqueline L. Thompson contributed to this alert.

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