Patent proofreading is a critical procedure that focuses on identifying and rectifying errors to ensure the accuracy and applicability of patents. This process plays a crucial role in safeguarding the integrity of patents by addressing any discrepancies that may impact their legal standing and enforceability. This process is a crucial step either before grant of a patent or through post-grant or pre-issuance review.
Why is proofreading done?
Studies indicate that a significant 98% of patents granted by the US Patent and Trademark Office (USPTO) include at least one error. These errors vary from minor typos to more critical issues that could impact any patent’s essential claims, potentially compromising its enforceability and commercial success. Consequently, thorough proofreading of patent drafts has become an essential and non-negotiable aspect of contemporary patent prosecution.
Navigating the patent process involves complexity, including numerous amendments, ongoing communication, and multiple submissions throughout the prosecution. Since mistakes are unavoidable, proofreading is essential.
Types of Patent Proofreading
Depending on the requirement, proofreading can be performed for:
- Face page Proofreading
- Full patent Proofreading
Face Page Proofreading
The first and basic part of proofreading is face page where the face page of issued patent is compared & analyzed with patent application filed, it includes:
Name and information of Inventor and Applicant: Name of the Inventor & Applicant are compared from “OATH & DEC & Filing Receipt”.
Application number & Filing date: Application number and filing date are compared from “EFS/Filing receipt”.
References cited: References cited are compared from forms such as “IDS/1449 or 892”.
Full patent Proofreading
This involves proofreading all the components of a patent i.e. front/face page, abstract, specification, drawings, and claims.
Abstract & Claims: Abstract & claims are compared from initially filed ones to latest forms in sequential order with issued abstract & claims.
Specification: Specification is compared as “Specification issued” vs “Specification filed”. The documents are separated into each segment and compared for errors, spell check, and grammar mistakes to that of PTO or applicant error and Certificate of Correction (COC) if filed.
Drawings: Drawings help in the understanding of the invention & help to map the description. Drawings also are proofread and are checked for clarity, and technical details.
When proofreading is done?
Proofreading is one of the last steps in obtaining a patent. Patent proofreading can be done at two stages namely
- Pre-grant of a patent – at Notice of Allowance (NOA) stage
- Post-grant of a patent
What kinds of errors can be corrected?
- Grammatical inaccuracies
- Clerical mistakes
- Typographical errors
- Inaccurate figures or tables
- Incorrect numbering of claims
- Errors in claim dependencies and more
How these errors can be rectified?
These minor mistakes in an issued U.S. patent may be corrected by means of a certificate of correction. There are two categories of the Certificate of Correction
- Certificates of Correction — Office Mistake
- Certificates of Correction – Applicant’s Mistake
Certificates of Correction — Office Mistake - 35 U.S.C. 254
Whenever a mistake in a patent, incurred through the fault of the Patent and Trademark Office, is clearly disclosed by the records of the Office, the Director may issue a certificate of correction stating the fact and nature of such mistake, under seal, without charge, to be recorded 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.- Office Mistake – 35 U.S.C. 254
Certificates of Correction - Applicant’s Mistake - 35 U.S.C. 255
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 Director may, upon payment of the required 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 reexamination. Applicant’s Mistake – 35 U.S.C. 255
Cost for filing Certificate of Correction
If an error is attributed to a mistake on the part of the USPTO, there is no fee associated with correcting it. However, when errors are made by applicants, a fee of $160 (subject to change) is currently required for rectification, with no reduction provided for small or micro entities.
MCRPL strategy for proofreading services
- MCRPL always uses AI/ML-based processes in all of its operations. We have an internal tool called MC Check that compares two documents and checks any basic errors like grammar and spelling.
- To ensure that the information contained in the issued patent is appropriate and original, we analyze the bibliographic data of the patent and compare it with its prosecution history.
- We analyze and check all the drawings in the issued patent after considering all the replacement sheets as the final submitted sheets, to assure that no glitches are left behind even in drawings.
- To ensure that the issued patent contains all the revisions for specification, we examine and compare all the information from “as issued” with “as filed.”
- We also analyze and compare the claims of the issued patents according to the examiner amendments, etc.