Honeywell v Arkema Certificate of Correction

Honeywell International Inc. v. Arkema Inc.

Nos. 2018-1151, 2018-1153 Fed. Cir. October 1, 2019 Before Circuit Judges Newman, Reyna, and Hughes.

During a post grant review proceeding, Honeywell sought authorization from the Board to file a motion for leave to petition the Patent and Trademark Office Director for a Certificate of Correction to correct a mistake in the chain of priority listed on the face of the patent. The Board rejected Honeywell’s request. The Court reversed, finding that the Board abused its discretion. The Court explained that a patent owner subject to a post-issuance review proceeding must follow three steps to file a petition for a Certificate of Correction:

1. seek authorization from the Board to file a motion;
2. if authorization is granted, file a motion with the Board, asking the Board to cede its exclusive jurisdiction so that the patentee can seek a Certificate of Correction from the Director; and
3. if the motion is granted, petition the Director for a Certificate of Correction under 35 U.S.C. § 255.

The Board refused to authorize Honeywell to file a motion for leave because “at this juncture there has been a failure to show that [the] requirements of 255 have been met.” The Court stated that Section 255 does not grant the Board authority to determine whether a mistake in an issued patent is of “minor character” or “occurred in good faith.” Rather, that authority is exclusively granted to the Director. The proper standard of review by the Board for motions for leave to seek a Certificate of Correction from the Director is only to “determine whether there is sufficient basis supporting Patent Owner’s position that the mistake may be correctable.” The Court went on to note that the PTO has previously allowed patentees to correct priority claims through Certificates of Correction. The Court rejected Arkema’s position, adopted by the Board, that it was prejudiced by Honeywell’s delay in seeking a Certificate of Correction. The Court noted that “[i]t is unclear how Honeywell would benefit from intentionally delaying its petition to the Director.” The Court also rejected Arkema’s assertion that the Board’s decision is unreviewable under 5 U.S.C. §701(a)(2) as agency action. The Court further chastised the Board for failing to provide an explanation or reasoned basis for its denial of Honeywell’s motion.

Photo from iStock

Read more: Federal Bar member attorneys may access the full case summary by registered patent attorney B.C. “Bill” Killough in the November 2019 issue of Federal Circuit Case Digest

B.C. Killough is a registered patent attorney based in Charleston, SC. On behalf of his clients, Bill has obtained more than 300 United States patents, participated in prosecuting more than 100 foreign patent applications and he has filed more than 1000 trademark applications with the US Patent and Trademark Offices.