Once a patent has been granted, there are a limited number of ways to amend the patent. (Patent claims can be amended in certain circumstances during the post grant review processes; they are not discussed herein.) If a patent owner wishes to amend their granted patent (for example, to correct minor typographical errors, evaluate a newly discovered reference, or substantively amend the patent claims), they will have to proceed through one of the various post-grant processes discussed below. Four avenues within the USPTO for a patent owner to deal with post-grant issues are: 1) Certificates of Correction, 2) Supplemental Examination, 3) Reexamination (“Reexam”), and 4) Reissue.
Below is a table illustrating various criteria to consider when choosing a particular avenue to deal with post-grant issues.
| Certificate of Correction | Supplemental Examination | Reexam | Reissue | |
| Who Can Initiate? | Only the patent owner. | Only the patent owner. | Patent owner or third party (can be anonymous). | Only the patent owner. |
| Deadline For Filing | Anytime. | Anytime. | Anytime while the patent is still enforceable and up to 6 years after expiration. | Anytime while the patent is still enforceable. |
| USPTO Filing Fees (subject to change; up-to-date fees can be found here) | $160 (for correction of Applicant’s mistake). | $4,620.00 (supplemental examination filing fee) and $12,700.00 (ex parte reexamination fee if ordered as a result of supplemental examination request). These fees are refundable if not instituted. | Institution Fee: $6,300-$12,600.
Excess of 3 independent claims: extra $480. Excess of 20 claims: extra $100. These fees are refundable if not instituted. |
Institution Fee:
$3,340. Excess of 3 independent claims: extra $480. Excess of 20 claims: extra $100. |
| Estimated Average Time for Decision(s) | Varies (may be a period of months). | Institution decision within 3 months of request. After conducting the supplemental examination if a substantial new question is present, an ex parte reexamination will be conducted and the case generally proceeds in a similar timeline to the original prosecution. | Institution decision within 3 months of request. After institution, the case generally proceeds in a similar timeline to the original prosecution. | Varies (may be a period of years). After institution, the case generally proceeds in a similar timeline to the original prosecution. |
| Basis That Can Be Raised | Mistakes made by the United States Patent and Trademark Office (“USPTO”) that are clearly disclosed by the USPTO records, or mistakes made by the Applicant which are i) of a clerical nature, ii) of a typographical nature, and/or iii) a mistake of minor character.
A Certificate of Correction for a mistake made by the Applicant will not be issued for changes that i) constitute new matter and/or ii) require reexamination. |
A patent owner may request supplemental examination to consider, reconsider, or correct information believed to be relevant to the patent (request must raise substantial new question of patentability). Consideration is not limited to patents and printed publications. If no substantial new question is found, then the USPTO will issue a “supplemental examination certificate” and patent owners receive the benefit of having patentability been confirmed. | 35 U.S.C. §102 (novelty) and 35 U.S.C. §103 (obviousness). | Correction of an error in the patent, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent. This option requires giving up of the granted patent. The most common bases for filing a reissue application are:
(A) the claims are too narrow or too broad; (B) the disclosure contains inaccuracies; (C) applicant failed to or incorrectly claimed foreign priority; and (D) applicant failed to make reference to or incorrectly made reference to prior copending applications. Patent claims can be broadened if within 2 years of grant date. |
| Ability For Third-Party To Participate | No third-party participation. | No third-party participation. Patent owner may not file the owner’s statement. | No third-party participation after initiation or after a reply to the patent owner’s optional statement. | No third-party participation. |
| Ability to Appeal Decision(s) | None. | On reexamination decision, first to the Patent Trials and Appeals Board (PTAB) then, if necessary, to the CAFC (third-parties cannot appeal to CAFC) and ultimately the Supreme Court. | First to the Patent Trials and Appeals Board (PTAB) then, if necessary, to the CAFC (third-parties cannot appeal to CAFC) and ultimately the Supreme Court. | First to the Patent Trials and Appeals Board (PTAB) then, if necessary, to the CAFC and ultimately the Supreme Court. |
Ultimately, these decisions should be made on a case-by-case basis depending on the varying factual circumstances. Contact Hoffmann & Baron, LLP if you believe your business needs assistance navigating these complex considerations.
Hoffmann & Baron, LLP is a full-service law firm specializing in all areas of intellectual property, both domestically and internationally, since 1984. We safeguard intellectual property assets through procurement, litigation, counseling, opinions and licensing. What sets us apart is our personalized attention and ability to customize our services to fit the requirements of each client. Hoffmann & Baron, LLP has offices in New York, New Jersey and Washington D.C.
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