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

Fri Jun 13 19:38:18 UTC 2025

There were a bunch of Certificate of Correction cases in the early 2000s.
Superior Fireplace was one if I recall?   If I recall, the test was
something like "on its face, it's clear there's an error, and from the file
history, it's clear and unambiguous what was intended."  If I recall, it
was something close to "There's at least one correct copy in the file
history, and it got transcribed into the issued patent incorrectly."  I can
imagine an infringer arguing that this doesn't meet that strict test.

I think ya gotta do some real legal research on this with your specific
facts.

On Fri, Jun 13, 2025 at 3:16 PM Alan Taboada <ataboada at mtiplaw.com> wrote:

> 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> 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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