Monday, September 15, 2014

Sample of Petitions to request republication

C.F.R. § 1.221 allows an Applicant to correct errors in published applications, by filing a petition that requests republication of specifically identified errors. This week I'll review a small sample of Petition Decisions for a Request for Republication. The interesting issues here are:
  • What's "material" ?
  • What's a "PTO mistake" ? 
These are important, since only mistakes that are both material and attributable to the PTO can be filed with no fees, under C.F.R.  § 1.221(b); otherwise, the filing is under C.F.R.  § 1.221(a) and a fee is owed. MPEP 1121 indicates that OCR errors are not considered PTO mistakes if caused by poor quality text in an Applicant submission. And the MPEP describes "material mistake" as one "that affects the public’s ability to appreciate the technical disclosure of the patent application publication or determine the scope of the provisional rights that an applicant may seek to enforce upon issuance of a patent." (MPEP 1130.A).

Today's post will discuss materiality in the context of a Request for Republication.

Materiality wasn't discussed in some of the Decisions I reviewed, presumably because the issue was clear on its face. For example, in Petition Decision 03-12-09 in Appl. No. 11/976,414, the Office summarily denied a request to correct a missing "and" in the title. This Decision did note (in dicta) that the title error could have been avoided if the Applicant had filed a Request for Corrected Filing Receipt.

Petition Decision 01-07-2009 in Appl. 11/976,182 is another one without a discussion of materiality.  The Office summarily granted a request in which the published claim read "wherein the second RF device is protocol is one of Bluetooth ...". The PTO apparently failed to apply a Preliminary Amendment that deleted one of the duplicate noun phrases ("wherein the second RF device is protocol is one of").

Petition Decision 02-05-10 in Appl. No. 11/974,186 is yet another Decision lacking discussion of materiality. The Office granted a request to correct the published claim "binds to the serum protein at least one physiological pH value of less than 6.7..." when a Preliminary Amendment added another instance of the preposition "at" ("binds to the serum protein at at least one physiological pH value of less than 6.7").

In some of the other Decisions, materiality seemed to be a closer call and was discussed in the Decision.

Petition Decision 05-15-09 in Appl. No. 11/969,182 involved capitalization in a chemical compound. Specifically, the compound in the claim read SIHpRq rather than SiHpRq. The Office denied the request for republication after finding the mistake was not material. The Decision explained that "the public would recognize the proper formula from the context which describes the molecule as 'an organic silane'."

Petition Decision 04-06-2009, Appl. No. 11/972,654 involved a Preliminary Amendment which deleted a list of elements ("one or more halogen (F, Cl, Br, I) atoms") from a claim. The patent publication did not take this deletion into account. The Office denied the request for correction, finding that the mistake was not material. "The error is a typographical error, which is clearly understandable by one of ordinary skill in the art in reading the claim, as the listed atoms are halogens" (Emphasis added.)

Petition Decision 06-08-2010 in Appl. No. 11/968,925 involved an independent claim reciting "a polynucleotide selected from the group consisting of", followed by group members designated by lower case letters: (a), (b), ... (j). Each of dependent claims 2-11 then claimed one of the group members, identified by lower case letter. In the patent publication, dependent claim 11 referred to subpart (O) of claim 1, rather than subpart (j). The Office denied the request for republication as not material. Since the independent claim referred to subparts (a) through (i), and there was no subpart (O), a person of skill in the art "would recognize the (O) in claim 11 to be an erroneous printing and understand the intended reference to (j)."

My two cents: There isn't a lot of guidance here about materiality, but the focus seems to be on reading in context, and on the knowledge of a POSITA. Even if a POSITA is initially confused by two upper case letters in SI HpRq, the meaning would be understood because the spec described an "organic silane." Similarly, a POSITA wouldn't be confused by the presence of "Fl, Cl, Br, and I" after the word "halogen," since these elements are halogens. I'm not a chemist, but I'm persuaded by the PTO's reasoning on these two.

In my mind, the polynucleotide claim (the one using a lower case letter to identify a group member) is a closer call. OK, I can see that (O) in dependent claim 11 is a mistake, since the independent claim only refers to (a) through (j). But how does the reader figure out which lower case letter was really intended?

The Petition Decision expected the reader to figure out that the first set of dependent claims, when considered as a whole, covered all 10 polynucleotides. Dependent claims 2 through 10 referred to polynucelotides (a) through (i), so isn't it logical that dependent claim 11 should refer to (j)? Is this asking too much of the reader?

According to MPEP 1130.A, we look at materiality from the viewpoint of "the public." The public doesn't have much chance of understanding a patent, so I'll make things simple and assume that "the public" really means "POSITAs." Even so, while it only takes a casual reading by a POSITA to figure out that (O) is wrong, it takes more work to figure out that (j) is right.  So I think the PTO got this one wrong: this mistake is material.

One of the Decisions – Petition Decision 05-06-2010 in Appl. No. 11/968,527, denied for being untimely – notes that an explanation of materiality may be a good idea:
Relevant copies of application papers may facilitate processing it it is not readily apparent where the error occurs. If it is not clear why the error is a material error, then explanation may be warranted.
Applying this to the polynucleotide claim, maybe the Request for Republication would have been granted if the Applicant had explained materiality, discussing it in terms of the amount of work needed to figure out which polynucleotide was intended by the drafter. Or maybe in coming up with this explanation, the Applicant would be convinced that the mistake wasn't material after all. By the way, none of the petitions I reviewed included any real explanation of materiality.

As a side note, the PTO doesn't maintain a database of all Petition Decisions, so it's not easy to search for them. However, Google does index some Petition Decisions, and that's where I found these. See USPTO Bulk Data - Patent Petition Decisions for more info. Of course, once you have the application number from the Decision, you can get the entire file history on PAIR.

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