TAKEAWAY: Post-allowance corrections should be evaluated for potential patent term adjustment (PTA) consequences. Practitioners and/or applicants should weigh whether a correction must be made before issuance or whether to handle the issue after the patent issues as certain requests made after allowance can reduce the patent term.
Once a Notice of Allowance is issued by the USPTO, practitioners review the application before paying the issue fee. Occasionally, this review may uncover minor errors, e.g., a misspelled inventor name, a typographical error in the specification, or another small informality. Certain issues may be corrected immediately by filing a request, e.g., a request under 37 C.F.R. § 1.48 to correct inventorship or another post-allowance correction request that requires additional processing by the USPTO. However, practitioners may consider the potential impact on PTA before doing so.
As a general matter, once a Notice of Allowance has issued, the application is considered by the USPTO to be in condition for issuance. If the applicant files a paper after allowance that requires further processing by the USPTO or otherwise prevents the patent from issuing promptly, e.g., a correction request or other amendment that requires the Office to reconsider the application or otherwise prevent issuance, the resulting delay is typically treated as applicant delay under the PTA framework, and in particular 37 C.F.R. § 1.704(c)(10), which provides that:
“Submission of an amendment under § 1.312 or other paper… after a notice of allowance has been given or mailed… in which case the period of adjustment… shall be reduced by the number of days, if any, beginning on the day after the date of mailing of the notice of allowance under 35 U.S.C. 151 and ending on the date the amendment… or other paper was filed.”
Importantly, the amount of applicant delay is measured from the day after the mailing date of the Notice of Allowance and ending on the date that the request is filed. In other words, even if the USPTO processes the correction quickly, the PTA reduction can reach back to the date the application was deemed ready for issuance.
As an example, suppose a Notice of Allowance is mailed on January 1, and during a routine review the practitioner and/or applicant notices that an inventor’s name is misspelled. If a correction request is filed on March 1, the request has effectively delayed issuance of an otherwise allowable application and the USPTO may treat the period from January 1 to March 1 (approximately 60 days) as applicant delay, reducing the resulting patent’s PTA by that corresponding duration. The speed at which the USPTO processes the correction request does not eliminate this PTA reduction because the application was considered ready to issue as of the Notice of Allowance date.
In some circumstances, therefore, it may be strategically preferable to allow the patent to issue with the minor error and subsequently address the issue post-issuance, e.g., through a certificate of correction under 35 U.S.C. § 254 (for USPTO errors) or § 255 (for applicant errors), if applicable. While post-issuance corrections may involve an additional procedural step, they generally avoid the PTA reduction that could occur if the correction were pursued after allowance but before patent issuance.