Issued Patent Proofreading
A recent study found that a third of the issued patents from the USPTO required a Certificate of Correction to fix the contained mistakes. Therefore, the need for patent proofreading does not stop after the patent gets issued. In the last step, you will still need to verify that many parts of the patent are correctly assembled and published by the USPTO.
The burden to spot any mistakes in the issued patent is on you, not the USPTO. If you identify an error in the issued patent, you must request the Office to issue a Certificate of correction under 37 CFR 1.322 or 1.323. Here are some of the proofreading steps that should be performed on the issued patent:
- Verify the issued claims against the latest claim set submitted to the USPTO (or entered by the Examiner’s amendment)
- Verify that all cited prior art in the disclosure statements appears on the front page of the issued patent
- Confirm inventor and title information
- Make sure that the correct drawings appear in the issued patent
Many of the above steps will require manual proofreading, but ClaimMaster could still help you with some of the operations. For example, you can use ClaimMaster’s Compare Claims feature to make sure that the issued claims are the same as the last claim set submitted to the USPTO, as explained below.
Steps for Issued Patent Proofreading
1. Open a Word document with the latest Office Action response or proposed amendment. Click on Compare Claims under the Time-Saving Tools in the ClaimMaster tab.
2. Once the compare dialog comes up, switch to the Compare to Patent tab and enter the newly issued patent number, as shown below. Here you can also select whether to compare all claims or just independent claims.
3. Next, click the Compare Claims button. ClaimMaster will download the claims from the issued US patent and compare them to the claims in your document. Any inconsistencies (there should’t be any) will be flagged, as shown below.
This little compare trick could save you from significant problems, as even small mistakes or changes in the issued claims that go unnoticed could spell trouble during patent enforcement many years later.
We plan to add other tools to help with post-issuance patent proofreading. In the meanwhile, if you’d like to try out ClaimMaster on your patent documents, download the free 30-day trial from here.