Trials@uspto.gov
`571-272-7822
`
`Paper: 26
`Entered: March 18, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH
`ORGANISATION,
`Petitioner,
`v.
`BASF PLANT SCIENCE GMBH,
`Patent Owner.
`
`PGR2020-00033
`Patent 10,301,638 B2
`
`
`
`
`
`
`
`
`
`Before ULRIKE W. JENKS, JO-ANNE M. KOKOSKI, and JEFFREY W.
`ABRAHAM, Administrative Patent Judges.
`KOKOSKI, Administrative Patent Judge.
`
`ORDER
`Granting Patent Owner’s Motion for Leave to
`Seek a Certificate of Correction
`37 C.F.R. §§ 1.323, 42.20
`
`
`
`
`
`
`
`571-272-7822
`
`Paper: 26
`Entered: March 18, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH
`ORGANISATION,
`Petitioner,
`v.
`BASF PLANT SCIENCE GMBH,
`Patent Owner.
`
`PGR2020-00033
`Patent 10,301,638 B2
`
`
`
`
`
`
`
`
`
`Before ULRIKE W. JENKS, JO-ANNE M. KOKOSKI, and JEFFREY W.
`ABRAHAM, Administrative Patent Judges.
`KOKOSKI, Administrative Patent Judge.
`
`ORDER
`Granting Patent Owner’s Motion for Leave to
`Seek a Certificate of Correction
`37 C.F.R. §§ 1.323, 42.20
`
`
`
`
`
`
`
`
`PGR2020-00033
`Patent 10,301,638 B2
`Pursuant to our authorization (Paper 15), BASF Plant Science GmbH
`(“Patent Owner” or “BASF”) filed a Motion for Leave to request a
`certificate of correction for the challenged patent, U.S. Patent
`No. 10,301,638 B2 (“the ’638 patent,” Ex. 1001). Paper 19 (“Motion” or
`“Mot.”). Commonwealth Scientific and Industrial Research Organisation
`(“Petitioner”) filed an Opposition. Paper 21 (“Opp.”). For the reasons that
`follow, Patent Owner’s Motion is granted.
`Background
`The ’638 patent claims priority to a German application filed on
`February 21, 2006 (“the German priority application”). Ex. 1007, codes
`(30), (63). Specifically, the ’638 patent states:
`This application is a continuation of patent application Ser. No.
`12/280,090, filed Aug. 20, 2008, which is a national stage
`application (under 35 U.S.C. § 371) of PCT/EP2007/051675,
`filed Feb. 21, 2007, which claims benefit of German application
`10 2006 008 030.3, filed Feb. 21, 2006, and European
`application 06120309.7, filed Sep. 7, 2006.
`Ex. 1001, 1:7–12; see id. at codes (30), (63). Patent Owner moves for leave
`to request from the Director a certificate correcting the ’638 patent to
`reference a written joint research agreement (“JRA”) with Bioriginal Food &
`Science Corporation (“Bioriginal”) that Patent Owner asserts was effective
`by the February 21, 2006 filing date of the German priority application.
`Mot. 1. According to Patent Owner, one or more of the Canadian inventors
`listed on the ’638 patent was affiliated with Bioriginal before the German
`priority application’s filing date, when the JRA between BASF and
`Bioriginal was already in effect. Mot. 1–2 (citing Ex. 2041, 2, 7). Patent
`Owner asserts that “in the spring of 2007, all of the inventors assigned their
`rights in the disclosed subject matter to BASF, as evidenced by an
`
`2
`
`
`
`PGR2020-00033
`Patent 10,301,638 B2
`assignment recorded in the PTO’s assignment database at Reel/Frame
`No. 039636/0233.” Id. at 2.
`Patent Owner asserts that BASF filed an international (PCT)
`application claiming priority to the German priority application that timely
`entered the U.S. national phase, and then subsequently filed a continuation
`that issued as the ’638 patent. Mot. 2. Patent Owner asserts, however, that
`“the specification text of these U.S. patent applications was never amended
`to reference the written joint research agreement, a reference peculiar to U.S.
`patent practice.” Id. (citing 37 C.F.R. §§ 1.71(g)(1), 1.9(e)). Patent Owner
`argues that the failure to identify the parties to the JRA is a correctable
`mistake. Id. at 5 (quoting 37 C.F.R. § 1.71(g)(3)).
`The correction sought could bear on whether art cited in the Petition
`(Ex. 1006, the ’093 publication) is prior art to the ’638 patent. Pet. 36;
`Mot. 3–4; Opp. 2–4.
`
`Discussion
`In order to file a request for a certificate of correction, Patent Owner
`
`must:
`
`(1) seek authorization from the Board to file a motion,
`37 C.F.R. § 42.20(b); (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, 37 C.F.R. § 1.323; MPEP § 1485;
`and (3) if the motion is granted, petition the Director for a
`Certificate of Correction under 35 U.S.C. § 255.
`Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345, 1349 (Fed. Cir. 2019).
`As to the first step in Honeywell, we granted authorization to file the instant
`motion in an Order dated December 4, 2020 (Paper 15), and Patent Owner
`filed this Motion as required by the second step.
`
`3
`
`
`
`PGR2020-00033
`Patent 10,301,638 B2
`According to the Federal Circuit, “the Director—not the Board—will
`evaluate the merits of the patentee’s petition, including whether the mistake
`is of ‘minor character’ or ‘occurred in good faith.’” Honeywell, 939 F.3d
`at 1349 (citing 35 U.S.C. § 255). The statute gives this authority to the
`Director, and the Director has not delegated this authority to the Board. Id.
`The Board’s role is simply “to determine whether there is sufficient basis
`supporting Patent Owner’s position that the mistake may be correctable.”
`Id. (internal quotation marks and citation omitted).
`Rule 1.71 provides that “[t]he specification may disclose or be
`amended to disclose the names of the parties to a joint research agreement as
`defined in § 1.9(e).” 37 C.F.R. § 1.71(g)(1). It goes on to state:
`If an amendment under paragraph (g)(1) of this section is filed
`after the date the issue fee is paid, the patent as issued may not
`necessarily include the names of the parties to the joint research
`agreement. If the patent as issued does not include the names
`of the parties to the joint research agreement, the patent must be
`corrected to include the names of the parties to the joint
`research agreement by a certificate of correction under 35
`U.S.C. 255 and § 1.323 for the amendment to be effective.
`Id. § 1.71(g)(3). Rule 1.9(e) defines “joint research agreement” to mean “a
`written contract, grant, or cooperative agreement entered into by two or
`more persons or entities for the performance of experimental developmental,
`or research work in the field of the claimed invention.” Id. § 1.9(e). Patent
`Owner submits a copy of its JRA with Bioriginal (Ex. 2041), and identifies
`the text it proposes to insert at the beginning of the ’638 patent specification
`(Mot. 4).
`Petitioner opposes Patent Owner’s Motion. Specifically, Petitioner
`argues that Patent Owner’s “failure to amend the specification to describe
`the JRA during prosecution is not a mistake of clerical or typographical
`
`4
`
`
`
`PGR2020-00033
`Patent 10,301,638 B2
`nature, nor is it a mistake of minor character.” Opp. 5. Our role, however,
`is not to decide whether Patent Owner’s request for a certificate of
`correction is meritorious; instead, we are tasked with simply assessing
`whether there is a sufficient basis to support Patent Owner’s position. If so,
`it is up to the Director to decide whether to exercise the authority under
`§ 255 and issue a certificate of correction.
`We have reviewed the arguments in the Motion and conclude that
`“there is a sufficient basis supporting Patent Owner’s position that the
`mistake may be correctable.” Honeywell, 939 F.3d at 1349. Petitioner’s
`arguments in the Opposition are either unpersuasive or go to the merits of
`Patent Owner’s requested correction, which we do not have the authority to
`decide. Id. Accordingly, we cede exclusive jurisdiction over the ’638 patent
`and grant Patent Owner permission to file a petition to the Director.
`Petitioner makes two requests in the event the Motion is granted.
`Opp. 1. First, Petitioner requests that we instruct Patent Owner to include
`Petitioner’s Opposition with its petition to the Director. Id. In our view,
`Petitioner’s Opposition may be useful to the Director in determining whether
`it is appropriate to issue a certificate of correction. Therefore, we order
`Patent Owner to include a copy of Petitioner’s Opposition with the petition
`submitted to the Director. Second, Petitioner “requests that the Board not
`alter the existing schedule of deadlines” in the Scheduling Order if the
`Motion is granted. Id. at 7. Patent Owner’s Motion does not include a
`request to change the existing schedule, and we confirm that the schedule is
`unaffected by the pendency of Patent Owner’s petition to the Director.
`Order
`In consideration of the foregoing, it is hereby
`ORDERED that Patent Owner’s Motion is granted;
`
`5
`
`
`
`PGR2020-00033
`Patent 10,301,638 B2
`FURTHER ORDERED that Patent Owner shall file with the Director
`a Petition for a Certificate of Correction within fourteen (14) business days
`of the entry of this Order, shall serve a copy of the Petition on Petitioner, and
`shall file a copy of the Petition as an exhibit in this proceeding;
`FURTHER ORDERED that Patent Owner shall include a copy of
`Petitioner’s Opposition with the Petition submitted to the Director;
`FURTHER ORDERED that when a decision is rendered on Patent
`Owner’s Petition for a Certificate of Correction, Patent Owner shall file,
`within five (5) business days of such decision, a copy of the document as an
`exhibit in this proceeding; and
`FURTHER ORDERED that the schedule in this proceeding will
`continue unaffected by the pendency of the Petition for a Certificate of
`Correction.
`
`
`
` FOR PETITIONER:
`Gary J. Gershik
`John P. White
`COOPER & DUNHAM LLP
`ggershik@cooperdunham.com
`jwhite@cooperdunham.com
`
`
`FOR PATENT OWNER:
`
`Sandip H. Patel
`Mark H. Izraelewicz
`MARSHALL GERSTEIN & BORUN LLP
`spatel@marshallip.com
`mizraelewicz@marshallip.com
`
`
`6
`
`
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