In the process of registering a patent under United States law, the United States Patent and Trademark Office (USPTO) presides under the statutory framework provided by the provisions of Article 35 of the United States Code. Those questions which may arise in regard to amending or correcting a patent application or registration may be answered by reference to Chapter 25 of Title 35. In this section the prospective patent applicant or current patent holder may find information on “Reissue of defective patents,” Section 251, “Effects of reissue,” Section 252, “Disclaimer,” Section 253, “Certificate of correction of Patent and Trademark Office mistake,” Section 254, “Certificate of correction of applicant’s mistake,” Section 255, and “Correction of named inventor,” Section 256.
Under Section 251, the Director of the USPTO can remedy a patent application that is found after the fact to have been flawed. Such a determination may be made by the USPTO in the event that the patent application did not adequately describe every detail of the invention. It might also be made upon the finding that the claims made by the patent application exceeded permissible limits. For whatever reason that a patent is rendered invalid, the USPTO allows through observance of this provision that the applicant “surrender” the patent to the temporary control of the agency.
Thus momentarily acceded, the patent will be amended and then reissued. The original patent term will still be in effect. If required, different sections of the patent application may be amended individually. According to Section 252, the reissuing of the patent will not take effect against actions taken by other individuals made before the reissuing took place and which would not have been permissibly prohibited by the originally issued form of the patent.
As allowed for by Section 253, the discovery that one of the “claims” of the original patent application is invalid may be addressed by the patent holder by making a disclaimer and registering it with the USPTO, upon payment of the required fee. This disclaimer will then be incorporated into the patent. It will not affect the validity of the other, separate claims of the patent.
Corrections may be made without charge to the patent in the event that a mistake on the part of the USPTO occasions the need for one. The USPTO may decide to issue either an official certificate of correction to be made part of the official record on the patent, or simply a reissued and corrected patent, either through the provisions of Section 254. Likewise, a mistake made by the applicant is provided for under Section 255.
This section may only be appealed to in the event that the mistake occurred “in good faith” and was of a minor nature, not altering the substance of the patent’s definition or function. If an individual is mistakenly named or excluded from a patent application which is issued in registration, the matter may be appealed to the USPTO to be corrected, without further need for reissuing the entire patent.
