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

Fri Jun 13 19:16:27 UTC 2025

Thanks, all –

Let’s say this was a clear clerical error.

For example, in taking allowable subject matter where several dependent claims were allowed, the response noted that the amendment is merely to take allowable subject matter but one of the limitations was included twice rather than once.

I would think that could be correctable by a certificate of correction.

35 U.S.C. 255   Certificate of correction of applicant’s mistake.
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.

I would say this arguably falls within the above.  A reissue is also a possibility, but obviously much more expensive and time consuming.

What if the USPTO accepts and issued the certificate of correction, is there any case law where another party challenges the patent based upon the USPTO improperly correcting the patent?

From: David Boundy <DavidBoundyEsq at gmail.com>
Sent: Friday, June 13, 2025 3:04 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Alan Taboada <ataboada at mtiplaw.com>
Subject: Re: [Patentpractice] Issued Claim Hypothetical - Definite? or Definitely Not?

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<mailto: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

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