McDermott Will & Emery

Addressing the requirements for correcting a mistake in a patent undergoing inter partes review, the Patent Trial and Appeal Board (PTAB or Board) granted the patent owner’s motion requesting authorization to file a certificate of correction necessary to fix a mistake in a dependent claim of the patent at issue. Aceto Agricultural Chemicals Corp. v. Gowan Company LLC, Case No. IPR2016-00076 (PTAB, July 21, 2016) (Paulraj, APJ).

The challenged patent relates to compositions comprising synergistically effective amounts of two herbicides used to control undesired vegetative growth in rice crops. Claim 9 erroneously recited an herbicide ratio of “about 0.6:0.08” rather than the correct ratio of “0.66:0.08.” According to the patent owner, the error resulted from an amendment made during prosecution that mistakenly omitted the second “6” in the recited ratio. Similar amendments had been introduced into other dependent claims, although with the correct ratios. Moreover, original claim 9 and the specification recited the correct ratio. Because the proposed correction would narrow, rather than broaden, the claim scope, the patent owner characterized the mistake as one of “minor character.” The petitioner did not oppose the patent owner’s motion.

When a patent owner seeks to correct an error in a patent involved in a trial before the PTAB, a request for a certificate of correction must be accompanied by a motion seeking the PTAB’s authorization. In this case, the patent owner properly requested such authorization. Noting that the correction did not appear to be controversial, the PTAB concluded that the patent owner had presented sufficient basis for seeking the correction and authorized the patent owner’s request. The PTAB also ordered the parties to proceed as though the claim recited the correct ratio, but acknowledged that the final discretion on whether to grant the requested certificate of correction lies with the director.