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I have a problem where I didn’t list the claims of priority in the ADS, though I did on the first page of the specification. (Everything is US.) The patent was allowed with minimal fuss and no one mentioned that the ADS was incorrect. As it has now issued, I understand that I will have to file a COC and then a petition, but I can’t find an example of a Certificate of Correction that corrects the ADS. Is this done in the same way that errors in the claims and specification are corrected, using the same simple form? And can it be used with other corrections, all in one filing?

I really don’t want to screw this up due to the high cost of the petition.

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Certificate of correction is for any content in an issued patent. If the issued patent has the priority claim on its face you are fine. At this point (assuming the patent has issued) you correct the patent not what led to the patent.

Look at 35 U.S.C. 120 Benefit of earlier filing date . .. or MPEP 211.

No COC is ever for anything except the content of the issued patent. Is the priority claim on the face of the patent? If so I think you are fine. If not and the claim is in the first sentence of the application as filed then you need a COC to correct the absence of it on the face of the patent. If the claim for priority was never made before issue you probably can’t make it now.

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  • I was told by an examiner a while back that this is no longer sufficient. And the MPEP seems to suggest that it isn't-- "The reference to a previously filed application in an ADS under 37 CFR 1.57(a) is not sufficient to establish a priority or benefit claim to that previously filed application. Applicants must still provide priority and/or benefit information under the domestic benefit information heading or foreign priority information heading, as appropriate, in the application data sheet even if utilizing the reference filing provisions of 35 U.S.C. 111(c) and 37 CFR 1.57(a)."
    – Lou
    Jun 8 at 18:25
  • This paragraph is not about this topic CFR 1.57 is about incorporation by reference. Is the application still in examination? Issue fee paid yet ?
    – George White
    Jun 9 at 0:43
  • Is it allowed but issue fee not paid, issue fee paid but not issued, or actually issued?
    – George White
    Jun 9 at 0:56
  • It's issued and I'm told I need to file a COC, but I can't find any COCs that have involved an ADS.
    – Lou
    Jun 9 at 1:54
  • No COC is ever for anything except the content of the issued patent. Is the priority claim on the face of the patent? If so I think you are fine. If not and the claim is in the first sentence of the application as-filed, or as-amended during the proper time frame, then you need a COC to correct the absence of it on the face of the patent. If the claim for priority was never made before issue you probably can’t make it now. I don’t think I can help any further. You can ask the inventor assistance center. 800 786 9199.
    – George White
    Jun 9 at 2:47

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