35 U.S.C. § 256 — Correction of named inventor

Page 102 TITLE 35—PATENTS § 255 trial of actions for causes thereafter arising as if the same had been originally issued in such cor- rected form. The Director may issue a corrected patent without charge in lieu of and with like effect as a certificate of correction. (July 19, 1952, ch. 950, 66 Stat. 809; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 88 (Mar. 4, 1925, ch. 535, § 1, 43 Stat. 1268). The last sentence of the present section is omitted as obsolete. A sentence is added similar to a provision in the corresponding section in the trade-mark law, 15 U.S.C., 1946 ed., § 1057(f), and provides that the Commis- sioner may issue a corrected patent instead of a certifi- cate of correction. Editorial Notes AMENDMENTS 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113. See 1999 Amend- ment note below. 1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’ in two places. 1975—Pub. L. 93–596 substituted ‘‘Patent and Trade- mark Office’’ for ‘‘Patent Office’’ in section catchline and text. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. EFFECTIVE DATE OF 1975 AMENDMENT Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 of Title 15, Commerce and Trade. § 255. Certificate of correction of applicant’s mis- take Whenever a mistake of a clerical or typo- graphical 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 re- quired 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 re-examination. Such patent, to- gether with the certificate, shall have the same effect and operation in law on the trial of ac- tions for causes thereafter arising as if the same had been originally issued in such corrected form. (July 19, 1952, ch. 950, 66 Stat. 809; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906.) HISTORICAL AND REVISION NOTES This section providing for the correction of minor clerical errors made by the applicant, is new and fol- lows a similar provision in the trade-mark law, 15 U.S.C., 1946 ed., § 1057(g). Editorial Notes AMENDMENTS 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113. See 1999 Amend- ment note below. 1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’. 1975—Pub. L. 93–596 substituted ‘‘Patent and Trade- mark Office’’ for ‘‘Patent Office’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. EFFECTIVE DATE OF 1975 AMENDMENT Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 of Title 15, Commerce and Trade. § 256. Correction of named inventor (a) CORRECTION.—Whenever through error a person is named in an issued patent as the in- ventor, or through error an inventor is not named in an issued patent, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error. (b) PATENT VALID IF ERROR CORRECTED.—The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it 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 concerned and the Di- rector shall issue a certificate accordingly. (July 19, 1952, ch. 950, 66 Stat. 810; Pub. L. 97–247, § 6(b), Aug. 27, 1982, 96 Stat. 320; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, § 20(f), Sept. 16, 2011, 125 Stat. 334.) HISTORICAL AND REVISION NOTES This section is new and is companion to section 116. The first two paragraphs provide for the correction of the inadvertent joining or nonjoining of a person as a joint inventor. The third paragraph provides that a pat- ent shall not be invalid for such cause, and also pro- vides that a court may order correction of a patent; the two sentences of this paragraph are independent. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 designated first and second pars. as subsecs. (a) and (b), respectively, inserted headings, and, in subsec. (a), struck out ‘‘and such error arose without any deceptive intention on his part’’ after ‘‘not named in an issued patent’’. 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113. See 1999 Amend- ment note below. 1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’ in two places. Page 103 TITLE 35—PATENTS § 257 1982—Pub. L. 97–247 substituted ‘‘Correction of named inventor’’ for ‘‘Misjoinder of inventor’’ as section catchline and, in text, substituted ‘‘Whenever through error a person is named in an issued patent as the in- ventor, or through error an inventor is not named in an issued patent and such error arose without any decep- tive intention on his part, the Commissioner may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be im- posed, issue a certificate correcting such error’’ for ‘‘Whenever a patent is issued on the application of per- sons as joint inventors and it appears that one of such persons was not in fact a joint inventor, and that he was included as a joint inventor by error and without any deceptive intention, the Commissioner may, on ap- plication of all the parties and assignees, with proof of the facts and such other requirements as may be im- posed, issue a certificate deleting the name of the erro- neously joined person from the patent’’, substituted ‘‘The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as pro- vided in this section’’ for ‘‘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 Commissioner may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate adding his name to the patent as a joint inventor’’, and struck out provision that the misjoinder or nonjoinder of joint inventors not invalidate a pat- ent, if such error could be corrected as provided in this section. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title. EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. EFFECTIVE DATE OF 1982 AMENDMENT Amendment by Pub. L. 97–247 effective six months after Aug. 27, 1982, see section 17(c) of Pub. L. 97–247, set out as an Effective Date note under section 294 of this title. § 257. Supplemental examinations to consider, re- consider, or correct information (a) REQUEST FOR SUPPLEMENTAL EXAMINA- TION.—A patent owner may request supple- mental examination of a patent in the Office to consider, reconsider, or correct information be- lieved to be relevant to the patent, in accord- ance with such requirements as the Director may establish. Within 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct the supplemental exam- ination and shall conclude such examination by issuing a certificate indicating whether the in- formation presented in the request raises a sub- stantial new question of patentability. (b) REEXAMINATION ORDERED.—If the certifi- cate issued under subsection (a) indicates that a substantial new question of patentability is raised by 1 or more items of information in the request, the Director shall order reexamination of the patent. The reexamination shall be con- ducted according to procedures established by chapter 30, except that the patent owner shall not have the right to file a statement pursuant to section 304. During the reexamination, the Director shall address each substantial new question of patentability identified during the supplemental examination, notwithstanding the limitations in chapter 30 relating to patents and printed publication or any other provision of such chapter. (c) EFFECT.— (1) IN GENERAL.—A patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the in- formation was considered, reconsidered, or corrected during a supplemental examination of the patent. The making of a request under subsection (a), or the absence thereof, shall not be relevant to enforceability of the patent under section 282. (2) EXCEPTIONS.— (A) PRIOR ALLEGATIONS.—Paragraph (1) shall not apply to an allegation pled with particularity in a civil action, or set forth with particularity in a notice received by the patent owner under section 505(j)(2)(B)(iv)(II) of the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 355(j)(2)(B)(iv)(II)), before the date of a sup- plemental examination request under sub- section (a) to consider, reconsider, or correct information forming the basis for the allega- tion. (B) PATENT ENFORCEMENT ACTIONS.—In an action brought under section 337(a) of the Tariff Act of 1930 (19 U.S.C. 1337(a)), or sec- tion 281, paragraph (1) shall not apply to any defense raised in the action that is based upon information that was considered, re- considered, or corrected pursuant to a sup- plemental examination request under sub- section (a), unless the supplemental exam- ination, and any reexamination ordered pur- suant to the request, are concluded before the date on which the action is brought. (d) FEES AND REGULATIONS.— (1) FEES.—The Director shall, by regulation, establish fees for the submission of a request for supplemental examination of a patent, and to consider each item of information sub- mitted in the request. If reexamination is or- dered under subsection (b), fees established and applicable to ex parte reexamination pro- ceedings under chapter 30 shall be paid, in ad- dition to fees applicable to supplemental ex- amination. (2) REGULATIONS.—The Director shall issue regulations governing the form, content, and other requirements of requests for supple- mental examination, and establishing proce- dures for reviewing information submitted in such requests. (e) FRAUD.—If the Director becomes aware, during the course of a supplemental examina- tion or reexamination proceeding ordered under this section, that a material fraud on the Office may have been committed in connection with