[Patentpractice] Issued Claim Hypothetical - Definite? or Definitely Not?

[David Boundy]

Unless you can show that this was clerical error (PTO printing error?   The
language was in the original claims without the redundancy, and in an
Amendment the text is duplicated without underline, so it's clear it was an
error?), I can't imagine correcting this by certificate of correction.

Unless you are SURE SURE SURE hat this patent will never be
monitized/asserted/licensed, fix it now.  Once you see an infringer, then
reissue or reexam *in the best of circumstances* is three years.  If
there's a counterparty throwing wrenches into the reissue or reexam, the
patent will never reemerge, and then you're stuck with intevening rights.
If the real error is correctable by certificate of correction, correct it
now -- don't get yourself on the bad side of the equities, intervening
rights, notice, etc.

On Fri, Jun 13, 2025 at 1:12 PM Alan Taboada via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Happy Friday, Everybody –
>
>
>
> I am looking into a hypothetical situation regarding issues surrounding a
> patent claim that includes duplicative limitations and whether the claim
> would be considered indefinite or not.
>
>
>
> For example, if an issued claim recited:
>
>
>
> 1. A widget, comprising:
>
> a body, and at least one of:
>
>             (a) a cap coupled to the body;
>
>             (b) a flange extending from the middle of the body; or
>
>             (c) a flange extending from the middle of the body.
>
>
>
> In the above example, the alternatively recited limitations are not
> mutually exclusive but the “at least one of” language allows for multiple
> clauses to exist, so logically at least, the claim can include both (b) and
> (c).
>
> But since (b) and (c) are identical, is that a problem with respect to the
> validity of the claim or would it be considered definite since if you have
> or don’t have (b) you have or don’t have (c)?
>
>
>
> Also, I think this could be fixed by a certificate of correction to remove
> the duplicate limitation, but wondering if anyone has either had some
> experience with this or has a different point of view regarding potential
> issues.
>
>
>
> Lastly, even if fixable by certificate of correction, since I believe that
> you can correct the claim at any time, is this something that is better
> left alone and only corrected if you think you are going to assert or
> perhaps license or sell the patent?  Or would you be better served to make
> the correction immediately upon discovery of the error so that the claim is
> cleaner as soon as possible?
>
>
>
> Thanks.
>
>
>
> Alan
>
>
>
>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>


-- 


<https://www.iam-media.com/strategy300/individuals/david-boundy>

*David Boundy *| Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

Tel (646) 472-9737 | Fax: (202) 318-7707

*dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
<http://www.potomaclaw.com>*

Articles at http://ssrn.com/author=2936470 <http://ssrn.com/author=2936470>
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>

Click here to add me to your contacts.
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250613/ee7f3a44/attachment.html>