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Decision to accept later filing date due to omitted items not correctable via reissue
March 19, 2007
When you make a conscious choice between alternatives during prosecution, the Federal Circuit says you're stuck with it. That's the message from In re Serenkin, where the court held that an inventor could not, through reissue, claim priority to his provisional filing. Serenkin had filed a PCT application just before the one-year anniversary of his provisional, but the PCT did not contain the drawings. He had to choose between the drawings and his filing date: he chose the drawings. As a result of this "deliberate choice," he could not later go back and reclaim his provisional filing date via reissue, because there was no "error" to correct as required by the reissue statute, 35 U.S.C. § 251. More details of the case after the jump.Inventor Arnold Serenkin filed a provisional application on January 29, 1997, which included five pages of written specification and eight figures. On January 28, 1998, one day before the deadline, his lawyer filed a PCT application at the USPTO. The problem? The eight figures apparently didn't make the trip with the rest of Serenkin's PCT application. The figures were filed on February 17, 1998 in response to a postcard noting the missing drawings. On February 26, the USPTO (in its capacity as a PCT receiving office) sent Serenkin a formal Notification of Non-inclusion of Drawings with the International Application, and gave him a choice: either keep his January 28 filing date but lose the drawings submitted late, or take February 17 as his filing date and keep the drawings. Serenkin chose the latter, but because that date was more than a year after his provisional filing date, he could no longer claim priority to his 1997 provisional application's filing date. On August 29, 2000, the application issued as U.S. Patent No. 6,109,425. Later, in 2002 (and with new counsel), Serenkin filed for reissue of his patent in order to claim priority back to his 1997 provisional filing date. The reissue statute, 35 U.S.C. § 251, provides that:
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent.
Here, the examiner rejected his reissue application on the grounds that there was no "error" correctable by reissue, because the decision to accept the later filing date was not an error, but rather a deliberate decision. The BPAI affirmed, deciding that the failure to obtain the benefit of the earlier filing date was not due to inadvertence, accident, or mistake, but an error of judgment. The Federal Circuit affirmed. As an initial matter, the court noted prior cases where it held that "the deliberate action of an inventor or attorney during prosecution generally fails to qualify as a correctable error under § 251." The cited cases, In re Mead and In re Orita, both stated that when the inventor or attorney makes a conscious choice to pursue one of two alternatives, they may not, through reissue, elect to go back a make the other choice. The court also distinguished Serenkin's case from other cases where reissue applicants were permitted to use reissue to perfect a priority claim. In those cases, the court reasoned, the failure to claim priority was due to "inadvertence, accident, or mistake, which clearly are appropriate bases for reissue." Here, there was a "deliberate, but subsequently found to be disadvantageous, choice," and as a result, reissue was not available to correct it. To read the full decision in In re Serenkin, click here.
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