1400

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1400 Correction of Patents

1401
Reissue

1401.01
Requisites

1401.02
By Whom Filed and to Whom Granted

1401.03
Notice in Original File

1401.04
Offer To Surrender Original Patent and When
Such Patent Is Returned

1401.05
Use of Original Drawing

1401.06
Form of Specification and Claims

1401.07
New Matter

1401.08
The Reissue Oath or Declaration

1401.09
Examination of Reissue

1401.09
a) Adjudication of Original Patent

1401.10
Restriction and Election of Species

1401.10 (a) Divisional Reissue Application

1401.11
Allowance and Issue

1401.12
Reissue Filed While Patent Is in Interference

1402
Certificate of Correction-Office Mistake

1402.01
Applicant's Mistake

1402.02
Handling of Request for Certificate of Cor-
rection
1403
Statutory Disclaimer

Errors in a patent may be corrected in three
ways, namely by reissue, by the issuance of a
certificate of correction which becomes a part of
the patent. and by disclaimer.

## 1401 Reissue [R-48]

35 U.S.C. 251. Reissue of defective patents. When-
ever any patent is, through error without any deceptive
intention, deemed wholly or partly inoperative or
invalid, by reason of a defective specification or draw-
ing, or by reason of the patentee claiming more or less
than he had a right to claim in the patent, the Com-
missioner shall, on the surrender of such patent and
the payment of the fee required by law, reissue the
patent for the invention disclosed in the original patent,
and in accordance with a new and amended application,
for the unexpired part of the term of the original
patent. No new matter shall be introduced into the
application for reissue.

The Commissioner may issue several reissued patents
for distinct and separate parts of the thing patented.
upon demand of the applicant, and upon payment of
the required fee for a reissne for each of such reissued
patents.

The provisions of this title relating to applications
for patent shall be applicable to applications for re-
Issue of a patent, except that application for reissue
may be made and sworn to by the assignee of the
entire interest if the application does not seek to
enlarge the scope of the claims of the original patent.

No reissued patent shall be granted enlarging the
scope of the claims of the original patent unless applied
for within two years from the grant of the original
patent.

35 U.S.C. 41. Patent Fees. (a) The Commissioner
shall charge the following fees : .

4\. On filing each application for the reissue of a
patent. $65; in addition, on filing or on presentation
at any other time, $10 for each claim in independent
form which is in excess of the number of independent
claims of the original patent, and $2 for each claim
(whether independent or dependent) which is in ex-
cess of ten and also in excess of the number of claims
of the original patent. Errors in payment of the addi-
tional fees may be rectified in accordance with regu-
lations of the Commissioner.

The usual grounds for a reissue are that the
claims are too narrow or too broad, or that the
disclosure has inaccuracies. A reissue was
granted in Brenner v. State of Israel, 862 O.G.
661; 158 USPQ 584, where the only ground
urged was failure to file a certified copy of the
original foreign application to obtain the right
of foreign priority under 35 U.S.C. 119 before
the patent was granted. The correction of mis.
joinder of inventors was held to be a ground
for reissue in Ex parte Scudder, 169 USPQ 814.

When a reissue application is filed within
two years from the date of the original patent,
a rejection on the ground of lack of diligence
or delay in filing the reissue should not be made.

A "claim" for the benefit of an earlier filing
date in a foreign country under 35 U.S.C. 119
must be made in a reissue application even
though such a claim was made in the applica-
tion on which the original patent was granted.
However, no additional certified copy of the
foreign application is necessary. The procedure
is similar to that for "Continuing Applica-
tions" in § 201.14(b).

The heading on printed copies will not be
carried forward to the reissue from the original
patent. Therefore, it is important that the file
wrapper be endorsed under "Claims Foreign
Priority."

The applicant is permitted to present every
claim that was issued in the original patent for
a fee of 65 dollars. Additional claims must be
paid for in the same manner as claims must be

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paid for in original applications. The filing fee
for a design reissue application is 65 dollars.

## 1401.01 Requisites [R-48]

37 CFR 1.171. Application for reissue. An application
for reissue must contain the same parts required for
an application for an original patent, complying with
all the rules relating thereto except as otherwise pro-
vided, and in addition, must comply with the require-
ments of the rules relating to reissue applications. The
application must be accompanied by a certified copy of
an abstract of title or an order for a title report, to
be placed in the file, and by an offer to surrender the
original patent (§ 1.178).

1401.02 By Whom Filed and to
Whom Granted [R-48]

37 CFR 1.172. Applicants, assignees. (a) Reissue ap-
plications must be signed and sworn to, or declaration
made, by the inventors except as otherwise provided
(see §§ 1.42, 1.43, 1.47), and must be accompanied by
the written assent of all assignees, if any, owning an
undivided interest in the patent, but a reissue applica-
tion may be made and sworn to or declaration made by
the assignee of the entire interest if the application
does not seek to enlarge the scope of the claims of the
original patent.

(b) A reissue will be granted to the original patentee,
his legal representatives or assigns as the interest may
appear.

The examiner must inspect the abstract of
title to determine whether 37 CFR 1.172 has
been complied with.

## 1401.03 Notice in Original File [R-48]

37 CFR 1.179. Notice of reissue application. When an
application for a reissue is filed, there will be placed
In the file of the original patent a notice stating that
an application for reissue has been filed. When the
reissue is granted or the reissue application is other-
wise terminated, the fact will be added to the notice
in the file of the original patent.

Whenever a reissue application is filed, a
form PTO-445 notice is entered on the file
wrapper of the original patent and pertinent
data filed in by the Application Division. When
divisional or continuation reissue applications
are filed, a separate form for each application is
placed in the original patent. When the reissue
is granted or the prosecution of the reissue ap-
plication is terminated, it is important that the
Record Room be informed of that fact by writ-
ten memo and the information is applied by the
Record Room on the notice in the patented file.

1401.04 Offer To Surrender Original
Patent and When Such
Patent Is Returned [R-48]

37 CFR 1.178. Original patent. The application for a
reissue must be accompanied by an offer to surrender
the original patent. The application should also be
accompanied by the original patent, or if the original
is lost or inaccessible, by an affidavit or declaration to
that effect. The application may be accepted for exami-
nation in the absence of the original patent or the affida-
vit or declaration, but one or the other must be supplied
before the case is allowed. If a reissue be refused, the
original patent will be returned to applicant upon his
request.

The examination of the reissue application
on the merits is made even though the offer to
surrender the original patent or an affidavit or
declaration to the effect that the original is lost
or inaccessible has not been received, but in such
case the examiner should require one of them in
the first action. Either an affidavit or declara-
tion as to lost or the original patent must be
received before the examiner can allow the re-
issue application.

If applicant requests the return of his patent,
on abandonment of the reissue application, it
will be sent to him by the Mail and Correspond-
ence Division and not by the examining group.

## 1401.05 Use of Original Drawing [R-48]

37 CFR 1.174. Drawings. (a) The drawings upon
which the original patent was issued may be used in
reissue applications if no changes whatsoever are to
be made in the drawings. In such cases, when the re-
issue application is filed, the applicant must submit
a temporary drawing which may consist of a copy of
the printed drawings of the patent or a photoprint of
the original drawings securely mounted by pasting on
sheets of drawing board of the size required for
original drawing, or an order for the same.

(b) Amendments which can be made in a reissue
drawing, that is, changes from the drawing of the
patent, are restricted.

The letter of transmittal in a reissue applica-
tion should request transfer of the drawings, if
such transfer is desired.

Applicant must submit a mounted copy of
the original drawing or "an order for same"
(37 CFR 1.174) if transfer of the original draw-
ing is contemplated.

Provided that no alteration whatsoever is to
be made in the drawings, including canceling
an entire sheet, the drawings of the original
patent may be used in lieu of new drawings.

The mounted copy of the drawing will be
marked "Informal, AFE" (Admitted for Ex-

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amination) by the Draftsman, but the exam-
iner should disregard this since the informality
will be corrected by formal transfer of the
drawing before final allowance.

When the reissue case is ready for allowance
the examining group makes the formal transfer
of the original drawing to the reissue case. See
§ 608.02(k). Additional sheets of drawings may
be added.

# 1401.06 Form of Specification and Claims [R-48]

37 CFR 1.173. Specification. The specification of the
reissue application must include the entire specification
and claims of the patent, with the matter to be omit-
ted by reissue enclosed in square brackets; and any
additions made by the reissue must be underlined, so
that the old and the new specifications and claims may
be readily compared. Claims should not be renumbered
and the numbering of claims added by reissue should
follow the number of the highest numbered patent
claim. No new matter shall be introduced into the
specification.

The file wrappers of all reissue applications
are stamped "REISSUE" above the Serial
Number on the front of the file. "Reissue" also
appears below the Serial Number on the printed
label on the file wrapper.

Cut up soft copies of the original patent,
with each COLUMN securely mounted on a
separate sheet may be used in preparing the
specification and claims. It should be noted
that amendments to the reissue applications
should not be prepared in this way. In reissue
applications, both the descriptive portion and
the claims must be amended as specified in 37
CFR 1.121 (a). Note 37 CFR 1.121 (e).

An example of the form for a twice-reissued
patent is found in Re. 23,558.

## CERTIFICATE OF CORRECTION IN ORIGINAL PATENT

The applicant should include any changes,
additions. or deletions that were made by a Cer-
tificate of Correction to the original Patent
Grant in the reissue application without under-
lining or bracketing. The examiner should
verify that all Certificate of Correction changes
have been properly incorporated into the re-
issne application.

## 1401.07 New Matter [R-25]

New matter, that is, matter not present in
the patent, is excluded from a reissue applica-
tion with even greater strictness than in an
ordinary case. The claims in the reissue case
must also be for matter which the applicant
had the right to claim in the original patent.

New matter may exist by virtue of the omis-
sion of a feature or of a step in a method.
See United States Industrial Chemicals, Inc.
v. Carbide & Carbon Chemicals Corp. 1942
C.D. 751 ; 315 U.S. 668; 53 USPQ 6.

## 1401.08 The Reissue Oath or Decla- ration of [R-48]

37 CFR 1.175. Reissue oath or declaration. (a) Ap-
plicants for reissue, in addition to complying with the
requirements of the first sentence of § 1.65, must also
file with their applications a statement under oath or
declaration as follows :

(1) That applicant verily believes the original
patent to be wholly or partly inoperative or invalid,
and the reasons why.

(2) When it is claimed that such patent is so in-
operative or invalid "by reason of a defective specifi-
cation or drawing," particularly specifying such
defects.

(3) When it is claimed that such patent is inop-
erative or invalid "by reason of the patentee claiming
more or less than he had a right to claim in the
patent," distinctly specifying the excess or insufficiency
in the claims.

(4) Particularly specifying the errors relied upon,
and how they arose or occurred.

(5) That said errors arose "without any deceptive
intention" on the part of the applicant.

(b) Corroborating affidavits or declarations of others
may be filed and the examiner may, in any case, require
additional information or affidavits or declarations
concerning the application for reissue and its object.

The question of the sufficiency of the reissue
oath or declaration filed under 37 CFR 1.175
must in each case be reviewed and decided per-
sonally by the primary examiner.

The reissue oath or declaration must point out
very specifically what the defects are and how
the errors arose. The statements of the oath or
declaration must be of facts and not conclusions.

An allegation that the specification is insuffi-
cient merely because the claims are too narrow
ordinarily satisfies paragraph (a) (3) of the
rule.

A broadened reissue claim is one which
brings within its scope any subject matter not
embraced by the patent claims. A claim broad-
ened in one limitation is a broadened claim
though it may be narrower in other details. Fox
Typewriter Co. v. Corona Typewriter Co., 282
F. 502 In re Bostwick, 26 COPA 1117, 102 F.
2d 886. 41 USPQ 279; Schenk et al. v. United
Aircraft Corp., 43 F. Supp. 679, 51 USPQ 519;
and Mercoid Corp. v. Milwaukee Gas Specialty
Co., 33 F. Supp. 681, 46 USPQ 23; and In re
Rogoff. 120 USPQ 185 (CCPA 1958).

Relative to paragraph (a) (4) of the rule, de-
liberate cancellation of a claim in the original
patent application is ordinarily regarded as
evidence that the failure to include claims to

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## MANUAL OF PATENT EXAMINING PROCEDURE

the involved subject matter in the patent is
not due to error. The patent statutes afford no
authority for the reissue of a patent merely to
add other claims of the same scope as those
already granted, In re Wittry, 180 USPQ 320
(CCPA 1974). An error arising from a lack
of understanding or knowledge of applicant's
attorney as to the real invention may be an
acceptable reason for reissue. However, where
an alleged lack of understanding by applicant
or his attorney is based on a new factual situa-
tion, which did not exist at the time the patent
was taken out, reissue is improper.

Where the reissue oath or declaration is found
insufficient, all new claims in the reissue appli-
cation to which the insufficiency applies should
be rejected on the basis that the reissue oath
or declaration is insufficient, In re Wittry, 180
USPQ 320 (CCPA 1974).

## 1401.09 Examination of Reissue [R-48]

37 CFR 1.176. Examination of reissue. An original
claim, if re-presented in the reissue application, is sub-
ject to reexamination, and the entire application will
be examined in the same manner as original applica-
tions, subject to the rules relating thereto. excepting
that division will not be required. Applications for
reissue will be acted on by the examiner in advance of
other applications.

Reissue cases are "special" and remain "spe-
cial" even though applicant does not respond
promptly.

Examination of a reissue application in-
volves two aspects, first, it is examined in the
same manner as an original application and
second, it must be examined for compliance
with the reissue statute and rules. The prose-
cution of the original patent must be carefully
studied for its bearing on the reissne questions.

While an original claim is subject to re-
examination, the rejection of such a claim con-
stitutes the rejection of a previously allowed
claim and must be personally considered by the
primary examiner with great care. To be
effective, a reference must be prior to the effec-
tive filing date of the original patent.

# 1401.09(a) Adjudication of Original Patent [R-31]

When a reissue application is filed, the ex-
aminer should determine whether the original
patent has been adjudicated by a court. The
decision of the court and also other papers in
the suit may give information essential to the
examination of the reissue. The patented file
will contain notices of the filing and termina-
tion of infringement suits on the patent. which

notices are required by law to be filed by the
clerks of the District Courts. These notices
do not indicate if there was an opinion by the
court, nor whether a decision was published.
Shepard's Federal Citations and the cumula-
tive digests of the United States Patents Quar-
terly, both of which are in the Law Library,
contain tables of patent numbers giving the
citation of published decisions concerning the
patent. Where papers are not otherwise con-
veniently obtainable, the applicant may be re-
quested to supply or lend copies of papers and
records in suits, or the Office of the Solicitor
may be requested to obtain them from the court.
The information thus obtained should be care-
fully considered for its bearing on the proposed
claims of the reissue, particularly when the re-
issue application was made in view of the
holding of a court.

## 1401.10 Restriction and Election of Species [R-48]

The examiner may not require restriction in
a reissue application (rule 1.176 in § 1401.09).
If the original patent contains claims to differ-
ent inventions which the examiner may never-
theless consider independent and distinct, and
the reissue application also claims the same in-
ventions. the examiner should not require re-
striction between them or take any other action
with respect to the question of plural inven-
tions. Restriction is entirely at the option, in
the first instance, of the applicant. If the reissue
application contains claims to an independent
and distinct invention which was not claimed in
the original patent, these claims may be treated
by a suitable rejection, such as: lack of in-
operativeness of, or defect in, the original pat-
ent: lack of error; or not being for matter which
might have been claimed in the original patent.

When the original patent contains claims to
a plurality of species and the reissue applica-
tion contains claims to the same species, elec-
tion of species should not be required even
though there is no allowable generic claim. If
the reissue application presents claims to spe-
cies not claimed in the original patent, election
of species should not be required, but the added
claims may be rejected on an appropriate
ground which may be lack of inoperativeness
of, or defect in, the original patent and lack
of error in obtaining the original patent. Mosi
situations require special treatment.

# 1401.10(a) Divisional Reissue Appli- cations [R-48]

As is pointed out in the preceding section
the examiner cannot require restriction in re-

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issue applications, and if the original patent
contains several independent and distinct in-
ventions they can only be granted in separate
reissues if the applicant demands it. The fol-
lowing rule sets forth the only possibility of
divisional reissue applications.

37 CFR 1.177. Reissue in divisions. The Commis-
sioner may, in his discretion, cause several patents to
be issued for distinct and separate parts of the thing
patented, upon demand of the applicant, and upon
payment of the required fee for each division. Each
division of a reissue constitutes the subject of a sepa-
rate specification descriptive of the part or parts of the
invention claimed in such division ; and the drawing
may represent only such part or parts, subject to the
provisions of §§ 1.83 and 1.84. On filing divisional re-
issued applications, they shall be referred to the Com-
missioner. Unless otherwise ordered by the Commis-
sioner, all the divisions of a reissue will issue simul-
taneously; if there be any controversy as to one
division, the others will be withheld from issue until
the controversy is ended, unless the Commissioner
shall otherwise order.

1401.11 Allowance and Issue [R-48]

In all reissue applications prepared for
issue. a horizontal line should be drawn through
the middle of the "NAME" box on the blue
Issue Classification Slip (form PTO-270). The
applicant's name should be placed in the upper
portion of the box and the number of the orig-
inal patent being reissued should be placed in
the lower portion of the box.

The specifications of reissue patents will be
printed in such a manner as to show the
changes over the original patent by printing
material omitted by reissue enclosed in heavy
brackets [ ] and material added by reissue in

italics. Rule 1.173 (see § 1401.06) requires the
specification of a reissue application to be
presented in a specified form, specifically de-
signed to facilitate this different manner of
printing, as well as for other reasons.

The printed reissue specification will carry
the following heading which will be added by
the Patent Issue Division :

"Matter enclosed in heavy brackets [ ] ap-
pears in the original patent but forms no part
of this reissue specification; matter printed
in italics indicates the additions made by
reissue."

The examiners should see that the specifica-
tion is in proper form for printing. Matter ap-
pearing in the original patent which is omitted
by reissue should be enclosed in heavy brackets,
while matter added by reissue should be under-
lined. All the claims of the patent should appear
in the specification, with omitted claims enclosed
in brackets. No renumbering of the original
patent claims is necessary, even if the depend-
ency of a dependent claim is changed by reissue
so that it is dependent on a subsequent higher
numbered claim. New claims should follow the
number of the highest numbered patent claims
and be underlined to indicate italics. The pro-
visions of rule 1.173 that claims should not be
renumbered applies to the reissue application
as filed. When the reissue is allowed, any
claims remaining which are additional to the
patent claims are renumbered in sequence
starting with the number next higher than the
number of claims in the original patent. There-
fore, the number of claims allowed will not

U. S. GOVERNMENT PRINTING OFFICE : 1975 D - 206-217

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1402.01

necessarily correspond to the number of the last
claim in the reissue application, as allowed.

In the case of reissue applications which
have not been prepared in the indicated man-
ner, the examiner may request from the appli-
cant a clean copy of the reissue specification
prepared in the indicated form. However, if
the deletions from the original patent are
small, the reissue application can be prepared
for issue by putting the bracketed inserts at
the appropriate places and suitably numbering
the claims.

All parent application data on the original
patent file wrapper should be placed on the re-
issue file wrapper, if it is still proper.

The list of references to be printed at the
end of the reissue specification should inchide
both the references cited during the original
prosecution as well as the references cited dur-
ing the prosecution of the reissue application.

NOTE .- Transfer of drawing, § 1401.05.

There is no issue fee for reissue applications
in which the patent being reissued was granted
prior to October 25, 1965. For reissue applica-
tions in which the patent being reissued was
granted after October 25, 1965, the issue fee is
set forth in 35 U.S.C. 41(a)2. [R-44]

# 1401.12 Reissue Filed While Patent Is in Interference [R-20]

If an application for reissue of a patent is
filed while the patent is involved in interfer-
ence, that application must be called to the at-
tention of the Commissioner before any action
by the examiner is taken thereon.

When an application for reissue of a patent
is filed while the patent is involved in inter-
ference, a letter with titling relative to the inter-
ference is placed in the interference file and in
the reissue application file, and a copy thereof
is sent to each of the interfering parties, giving
notice of the filing of the reissue application.
See § 1111.08.

# 1402 Certificates of Correction-Of- fice Mistake [R-44]

35 U.S.C. 254. Certificate of correction of Patent
\+ and Trademark Office mistake. Whenever a mistake
in a patent, incurred through the fault of the Patent
and Trademark Office, is clearly disclosed by the rec-
ords of the Office, the Commissioner may issue a cer-
tificate of correction stating the fact and nature of
such mistake, under seal, without charge, to be re-
corded in the records of patents. A printed copy thereof
shall be attached to each printed copy of the patent,

and such certificate shall be considered as part of the
original patent. Every such patent, together with such
certificate, shall have the same effect and operation in
law on the trial of actions for causes thereafter arising
as if the same had been originally issued in such cor-
rected form. The Commissioner may issue a corrected
patent without charge in lieu of and with like effect as
a certificate of correction.

Rule 322. Certificate of correction of Office mistake.
(a) A certificate of correction under 35 U.S.C. 254,
may be issued at the request of the patentee or his as-
signee. Such certificate will not be issued at the request
or suggestion of anyone not owning an interest in the
patent, nor on motion of the Office, without first noti-
fying the patentee (including any assignee of record)
and affording him an opportunity to be heard.

(b) If the nature of the mistake on the part of the
Office is such that a certificate of correction is deemed
inappropriate in form, the Commissioner may issue a
corrected patent in lieu thereof as a more appropriate
form for certificate of correction, without expense to
the patentee.

Mistakes incurred through the fault of the
Office are the subject of Certificates of Correc-
tion under rule 322. If such mistakes are of
such a nature that the meaning intended is ob-
vious from the context, the Office may decline
to issue a certificate and merely place the cor-
respondence in the patented file, where it
serves to call attention to the matter in case
any question as to it arises.

Letters which merely call attention to errors
in patents, with a request that the letter be
made of record in the patented file, will not be
acknowledged. Unless notification to the con-
trary is received within thirty days, it may be
assumed that such letters have been made of
record as requested.

In order to expedite all proper requests, a
Certificate of Correction should be requested
only for errors of consequence. Letters mak-
ing errors of record should be utilized when-
ever possible.

Each issue of the Official Gazette (patents
section) numerically lists all United States pa-
tents having Certificates of Correction. The list
appears under the heading "Certificates of Cor-
rection for the week of (date)."

# 1402.01 Applicant's Mistake [R-44]

35 U.S.C. 255. Certificate of correction of appli-
cant'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 Commissioner
may, upon payment of the required fee, issue a certifi-
cate of correction, if the correction does not involve

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such changes in the patent as would constitute new
matter or would require re-examination. Such patent,
together with the certificate, shall have the same effect
and operation in law on the trial of actions for causes
thereafter arising as if the same had been originally
issued in such corrected form.

Rule 323. Certificate of correction of applicant's mis-
take. Whenever a mistake of a clerical or typograph-
ical nature or of minor character which was not the
fault of the Office, appears in a patent and a showing
is made that such mistake occurred in good faith, the
Commissioner may, upon payment of the required fee,
issued a certificate of correction, if the correction does
not involve such changes in the patent as would con-
stitute new matter or would require reexamination.

Rule 323 relates to the issuance of Certifi-
cates of Correction for the correction of errors
which were not the fault of the Office. "A mis-
take is not of a minor character if the re-
quested change would materially affect the
scope or meaning of the patent.

The Issue Fee Transmittal Form portion
(POL-85b) of the Notice of Allowance as re-
vised in December 1969 and May 1973, provides
a space (item 2) for assignment data which
should be completed in order to comply with
rule 334 (37 CFR 1.334). Unless an assignee's
name and address are identified in item 2 of the
Issue Fee Transmittal Form POL-85b, the pa-
tent will issue to the applicant. Assignment
data printed on the patent will be based solely
on the information so supplied.

A request for correction of error arising from
incomplete or erroneous information furnished
in item 2 of POL-85b will not be granted as a
matter of course and will be subject to adher-
ence to all the requirements of rule 323 (37 CFR
1.323).

35 U.S.C. 256. Misjoinder of inventor. Whenever
a patent is issued on the application of persons as
joint inventors and it appears that one of such persons
was not in fact a joint inventor, and that he was in-
cluded as a joint inventor by error and without any
deceptive intention, the Commissioner may, on applica-
tion of all the parties and assignees, with proof of the
facts and such other requirements as may be imposed,
issue a certificate deleting the name of the erroneously
joined person from the patent.

Whenever a patent is issued and it appears that a
person was a joint inventor, but was omitted by error
and without deceptive intention on his part, the Com-
missioner may, on application of all the parties and
assignees, with proof of the facts and such other re-
quirements as may be imposed, issne a certificate add-
ing his name to the patent as a joint inventor.

The misjoinder or nonjoinder of joint inventors shall
not invalidate a patent, if such error can be corrected
as provided in this section. The court before which

such matter is called in question may order correction
of the patent on notice and hearing of all parties con-
cerned and the Commissioner shall issue a certificate
accordingly.

Rule 324. Correction of error in joining inventor.
Whenever a patent is issued and it appears that there
was a misjoinder or non-joinder of inventors and that
such misjoinder or omission occurred by error and
without deceptive intention, the Commissioner may, on
application of all the parties and the assignees and
satisfactory proof of the facts, or on order of a court
before which such matter is called in question, issue a
certificate deleting the misjoined inventor from the
patent or adding the non-joined inventor to the patent.

The "satisfactory proof of facts" required by
rule 324 must be of the same type and character
as the proof required to justify converting an
application, as described in § 201.03. An oath
or declaration of the type required by rule 65
corresponding to the newly asserted inventor-
ship must be submitted, together with the orig-
inal patent for attachment of the certificate.

## 1402.02 Handling of Requests for Certificates of Correction [R-44]

Requests for certificates of correction will be
forwarded by the Correspondence and Mail
Division, to the Solicitor's Office, where they
will be listed in a permanent record book.

Determination as to whether an error has
been made, the responsibility for the error, if
any, and whether the error is of such a nature
as to justify the issuance of a certificate of cor-
rection will be made by the Solicitor's office.
If a report is necessary in making such deter-
mination, the case will be forwarded to the ap-
propriate group with a request that the report
be furnished. If no certificate is to issue, the
party making the request is so notified by the
Solicitor's Office, and the request, report, if any,
and copy of the communication to the person
making the request are placed in the file and
entered thereon under "Contents" by the Solici-
tor's Office. The case is then returned to the
patented files. If a certificate is to issue, it will
be prepared and forwarded to the person mak-
ing the request by the Patent Issue Division.
In that case, the request, the report, if any, and
a copy of the letter transmitting the certificate
of correction to the person making the request
will be placed in the file and entered thereon
under "Contents".

Applicants, or their attorneys or agents, are
urged to submit the text of the correction on a
special Certificate of Correction Form, PO-
1050, which can serve as the camera copy for
use in direct offset printing of the certificate of
correction. Both parts of form PO-1050 must

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accompany the request since the second part
will be placed in the application file for internal
use.

A perforated space at the bottom of form
PO-1050 has been provided for the patentee's
current mailing address, and for ordering any
desired additional copies of the printed certifi-
cate. The fee for each additional copy ordered
is 30 cents per page. The fee should accompany
request.

L the

To facilitate the use of the Form PO-1050,
the public may obtain as many copies as needed
from the Correspondence and Mail Division or
from the receptionist in the lobby of building
3 at Crystal Plaza.

Where only a part of a request can be ap-
proved, or where the Office discovers and in-
cludes additional corrections. the appropriate
alterations are made on the form PO-1050 by
the Office. The patentee is notified of the
changes on the Notification of Approval-in-
part form POL-404. The certificate is issued
approximately 6 weeks thereafter.

Form PO-1050 should be used exclusively re-
gardless of the length or complexity of the sub-
ject matter. Intricate chemical formulas or page
of specification or drawings may be reproduced
and mounted on a blank copy of PO-1050. Fail-
ure to use the form has frequently delayed issu-
ance since the text must be retyped by the Office
onto a PO-1050.

The exact page and line number where the
errors occur in the application file should be
identified on the request. However, on form
PO-1050, only the column and line number in
the printed patent should be used.

The patent grant should be retained. The Of-
fice does not attach the certificate of correction
to patentee's copy of the patent. The patent
grant will be returned to the patentee if sub-
mitted.

Below is a sample form illustrating a variety
of corrections and the suggested manner of set-
ting out the format. Particular attention is
directed to:

a. Identification of the exact point of
error by reference to column and line num-
ber of the printed patent or to claim num-
ber and line where a claim is involved.

b. Conservation of space on the form by
typing single space, beginning two lines
down from the printed message.

c. Starting the correction to each sepa-
rate column as a sentence. and using semi-
colons to separate corrections within said
column, where possible.

d. Two inch space left blank at bottom
for signature of attesting officer.

e. Use of quotation marks to enclose the
exact subject matter to be deleted or cor-

rected; use of double hyphens(- - ) to en-
close subject matter to be added, except for
formulas.

f. Where a formula is involved, setting
out only that portion thereof which is to be
corrected or, if necessary pasting a photo-
copy onto form PO-1050.

The examiner's comments are requested on
form PO-306 revised, where, under rule 323,
there is a question involving change in subject
matter.

UNITED STATES PATENT OFFICE
CERTIFICATE OF CORRECTION

Patent No.
Dated April 1, 1969

James W. Worth

It is certified that error appears in the above-
identified patent and that said Letters Patent is
hereby corrected as shown below :

In the drawings, Sheet 3, Fig. 3, the reference
numeral 225 should be applied to the plate element
attached to the support member 207. Column 7, lines 45
to 49, the left-hand formula should appear as follows :

Rg
CX"Z

CF,

Column 10, formula XXXV, that portion of the formula
reading

CH
-¿-
should read
CN

_č
-0-

Formula XXXVII, that portion of the formula reading
"-CH.CH-" should read -- - CHCH- --. Column 2,
line 68 and column 3, lines 3, 8 and 13, for the claim
reference numeral "2", each occurrence, should read
-- 1 --. Column 10, line 16, cancel beginning with "12.
A sensor device" to and including "tive strips." in
column 11, line 8, and insert the following claim :

12\. A control circuit of the character set forth
in claim 1 and for an automobile having a con-
vertible top, and including ; means for moving said
top between raised and lowered retracted position ;
and control means responsive to said sensor relay
for energizing the top moving means for moving
said top from retracted position to raised position.

## 1403 Statutory Disclaimer [R-44]

35 U.S.C. 253. Disclaimer. Whenever, without any
deceptive intention, a claim of a patent is invalid the
remaining claims shall not thereby be rendered invalid.
A patentee, whether of the whole or any sectional inter-
est therein, may, on payment of the fee required by law,
make disclaimer of any complete claim, stating therein
the extent of his interest in such patent. Such dis-
claimer shall be in writing, and recorded in the Patent

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and Trademark Office; and it shall thereafter be con-
sidered as part of the original patent to the extent of
the interest possessed by the disclaimant and by those
claiming under him.

In like manner any patentee or applicant may dis-
claim or dedicate to the public the entire term, or any
terminal part of the term, of the patent granted or to be
granted.

Rule 321. Statutory disclaimer. (a) A disclaimer
under 35 U.S.C. 253 must identify the patent and the
claim or claims which are disclaimed, and be signed
by the person making the disclaimer, who shall state
therein the extent of his interest in the patent. A
disclaimer which is not a disclaimer of a complete
claim or claims may be refused recordation. A notice
of the disclaimer is published in the Official Gazette
and attached to the printed copies of the specification.
In like manner any patentee or applicant may disclaim
or dedicate to the public the entire term, or any termi-
nal part of the term, of the patent granted or to be
granted.

(b) A terminal disclaimer, when filed in an applica-
tion to obviate a double patenting rejection, must in-
clude a provision that any patent granted on that
application shall be enforceable only for and during
such period that said patent is commonly owned with
the application or patent which formed the basis for
the rejection. See rule 21 for fee.

The examination as to formal matters is
done by the Patent Issue Division.

Terminal disclaimers may affect the prosecu-
tion of other applications. They are brought
to the examiner's attention by the Patent Issue
Division which attaches a label to the file
wrapper after having a title search made, en-
dorsing the paper on the "Contents" and other-
wise insuring that the patent, if issued, will be
properly headed.

# TERMINAL DISCLAIMER IN PENDING APPLICATION PRACTICE

Since the claims of pending applications are
subject to cancellation, amendment or renum-
bering, a terminal disclaimer directed to a par-
ticular claim or claims will not be accepted;
the disclaimer must be of a terminal portion of
the term of the entire patent to be granted. The
statute does not provide for conditional dis-
claimers and accordingly, a proposed dis-

claimer which is made contingent on the
allowance of certain claims cannot be accepted.
The disclaimer should identify the disclaimant
and his interest in the application and should
specify the date when the disclaimer is to be-
come effective. An acceptable form for such a
disclaimer is as follows:

To the Commissioner of Patents and Trade-
marks:

Your petitioner, John Doe, residing at

in the county of
and
State of
represents that he is (here
state exact interest of disclaimant and, if he
is an assignee, set out the liber and page or reel
and frame where the assignment is recorded)
of Application No.
filed on the
day of
19 __ for
Your
petitioner hereby disclaims all that portion of
the term of any patent to be issued on the said
application subsequent to
19

The disclaimer must be accompanied by the
statutory fee.

FORM 53 TERMINAL DISCLAIMER TO OBVIATE
A DOUBLE PATENTING REJECTION
To the Commissioner of Patents and Trade-
marks:

Your petitioner,
residing at

in the county of
and
State of
represents that he is (here
state exact interest of the disclaimant and, if he
is an assignee, set out the liber and page or reel
and frame where the assignment is recorded)
of application Serial No.
filed on the
day of
19 __ for
Your petitioner,
hereby disclaims
the terminal part of any patent granted on the
above-identified application, which would ex-
tend beyond the expiration date of Patent No.
and hereby agrees that any patent sn
granted on the above-identified application
shall be enforceable only for and during such
period that the legal title to said patent shall
be the same as the legal title to United States
Patent No.
this agreement to run with
any patent granted on the above identified an ..
plication and to be binding upon the grant ~~
its successors or assigns.

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