Correcting an Incorrect Priority Chain During PGR/IPR

In a case decided yesterday, the Federal Circuit found that the Board abused its discretion by denying Honeywell’s request to file a motion for leave to file a certificate of correction. Honeywell International Inc. v. Arkema Inc., Case Nos. 2018-1151, -1153. After institution of a post grant review (“PGR”) Honeywell discovered an error in its priority claim and requested leave to file a petition for certificate of correction. Id. at *2. The Board denied the request because “at this juncture there has been a failure to show that [the] requirements of 255 have been met.” Id. at 8.

On appeal Honeywell argued that, while the mistake was not a clerical or typographical error, a certificate of correction is a permissible means for changing the priority claim and that the change was “minor” because it did not alter the substance of the claims or the specification. Id. at 4. Honeywell also argued that it satisfied the “good faith” requirement of 35 U.S.C. § 255 because it sought leave promptly after discovering the error, and Arkema did not contest this assertion. Id. Rather, Arkema countered that allowing Honeywell to correct the priority claim would be “extremely prejudicial” since the window to file another PGR with different prior art had closed. Id.

The Federal Circuit first rejected Arkema’s argument that the Board’s decision was unreviewable under 5 U.S.C. § 701(a)(2) as agency action “committed to agency discretion by law.” Id. at 5. On the merits, the Court determined that the Board “abused its discretion by assuming the authority that 35 U.S.C. § 255 expressly delegates to the Director: to determine when a certificate of correction is appropriate.” Id. at 6. The Court noted that a patent owner wishing to file a petition for certificate of correction must: (1) seek authorization from the Board to file a motion; (2) file a motion with the Board, if authorized, asking the Board to cede exclusive jurisdiction over the matter; and (3) if the motion is granted, petition the Director under 35 U.S.C. § 255. Id. (citations omitted). Once those steps are complete, it is the Director, not the Board, who evaluates the petition for certificate of correction. Id. at 7. The Court instructed the Board, on remand, to authorize Honeywell to file the motion and then review it in accordance with 37 C.F.R. § 1.323 and MPEP § 1485. Id. at 10-11.

This case provides a reminder to both parties to consider whether the priority chain is correct. Patent Owners, in particular, must remember to be prompt in requesting leave to file a motion for leave to petition for certificate of correction. The longer Patent Owner waits, the higher the likelihood that the motion will be denied. Petitioners too must by cognizant that a Patent Owner may use a certificate of correction to correct a priority claim to antedate prior art.

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