The PTAB recently denied a motion to correct clerical mistakes under 37 C.F.R. § 42.104(c) because the corrections presented substantive new evidence that would have had a substantial impact on the proceedings and prejudiced the patent owner.
Petitioner Sweegen, Inc. filed a petition for post grant review (PGR) of a patent covering a method of making a certain chemical compound. Petitioner argued that the claims were anticipated by an example in a prior art reference. To support its anticipation argument, Petitioner commissioned a bioanalytical chemistry laboratory to replicate that example. Based on the testing results, Petitioner submitted two declarations and argued that performing the example in that reference would have necessarily produced a certain product. Almost a month after Petitioner filed the exhibits, one of the laboratory's employees discovered that the test results "inadvertently linked the tables to the incorrect data cells." The correct results showed that more than twice the reported amount of the compound was actually produced in the reaction. Petitioner filed a motion to correct the error. Patent Owner opposed the motion and contended that the "proposed changes [would] have a substantial impact on the[] proceedings."
The board acknowledged that clerical mistakes may be corrected as long as they do not sacrifice the notice function of a petition. The board considers several non-exclusive factors to determine whether to allow correction. Here, the board first found that the nature of the error was "substantial because Petitioner [sought] to change the data in three tables." Even if the errors in the original report resulted from a clerical error, the proposed changes were "not mere clerical errors that may be corrected under Rule 104(c)." This factor weighed strongly in Patent Owner's favor. Second, the board found that although there was some delay between discovery of the error and bringing it to the board's attention, the delay was not unreasonable. Thus this second factor was neutral. Third, the board found that since the proposed changes were substantive, it would be prejudicial to force the Patent Owner to alter its arguments to account for the corrected data. Finally, the board found that the corrections would have a significant impact on the proceeding because they would "improv[e] Petitioner's anticipation argument." The third and fourth factors weighed heavily in Patent Owner's favor. As a whole, the factors weighed in favor of Patent Owner and the board denied Petitioner's motion.
Practice Tip: Petitioners should ensure that all supporting documents are correct before submitting the petition. A petitioner may not be permitted to correct clerical and typographical errors in its petition and supporting documents if the changes would require substantive alterations to the petitioner's evidence or argument.
Sweegen, Inc. v. Purcircle SDN BDH, PGR2020-00070, Paper 9 (PTAB Sept. 22, 2020).
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