What is a Clerical Error?

In TD Bank Group v. Global Session Holdings SRL, IPR2014-01356, Paper 10 (December 22, 2014), the Board considered what is a clerical error in deciding whether to allow petitioner to correct alleged clerical errors in its filings.  Among the many errors petitioner sought to correct was the name of the patent owner.  It appeared that petitioner relied upon the abstract of title available on the USPTO website, without noticing that the recorded document as listed as a “license” rather than assignment.  While patent owner did not object to correctly listing the patent owner in the caption, it argued that the error was not clerical.  The Board agreed, noting petitioner listed the exclusive licensee as the patent owner based on its review of the assignment records, even though these records indicate the agreement between Global Sessions LP and Global Session Holding is a “License.” The Board concluded that while there may have been an error in determining ownership of the patent, that error was not clerical or typographical in nature. Accordingly, it denied petitioner’s request to correct the caption of the Petition.  The effect petitioner’s motion to correct was actually an attempt to substitute parties.  Petitioners must be very careful when reviewing the USPTO’s assignment records, which are confusing.


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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.