Federal Circuit holds that deliberate decisions made during prosecution do not constitute “error” correctable by reissue under 35 U.S.C. §251

In In re Serenkin, 81 USPQ2d 2011 (Fed. Cir. 2007), the Federal Circuit upheld the final decision of the USPTO Board of Patent Appeals and Interferences (“Board”) sustaining the Examiner’s rejection of all claims in Reissue Application No. 10/134,550 (“the ‘550 reissue application”) for failure of Serenkin to establish a correctable error under 35 U.S.C. §251.

On January 29, 1997, Serenkin filed U.S. Provisional Application No. 60/036,649 (“the ‘649 provisional application”) in the USPTO entitled “Apparatus and Method for Uniformly Discharging Bulk Solid Material from Overhead Drag type Conveyors” including several pages of text and eight pages of figures. On January 28, 1998, Serenkin filed an application in the United States Receiving Office (USRO) under the Patent Cooperation Treaty claiming priority to ‘649 Provisional Application. The PCT application indicated that eight pages of figures were included with the application, and the specification specifically referenced the figures; however, no figures were included with the application. Upon notice of missing drawings received from the USRO, Serenkin submitted the eight sheets of figures on February 17, 1998.  On February 26, 1998, the USRO indicated that the originally filed application did not include the figures and provided Serenkin with the choice of either (1) prosecuting the originally filed application without the subsequently submitted figures and receive the January 28, 1998 filing date and concomitant priority back to the ‘649 provisional application, or (2) prosecuting the originally filed application with the subsequently filed figures and received the filing date of February 17, 1998 with no priority back to the ‘649 provisional application.  If Serenkin chose (2), no priority could be given as the drawings in the PCT application were filed more than one year after the filing of the ‘649 provisional application.  On March 24, 1998, the USRO again required that Serenkin make the decision to proceed with no figures and retain the filing date of January 28, 1998 or to incorporate the drawings into the application and receive the filing date of February 17, 1998.

On March 31, 1998, Serenkin accepted the February 17, 1998 filing date and intended to proceed to prosecute the application including the figures. And again, on August 19, 1998, Serenkin requested that the drawings be included in the application and the application be republished “showing a filing date of 17 February 1998 with no priority claim and the eight sheets of drawings filed on 17 February 1998.” On August 21, 1998, Serenkin requested to commence theUnited Statesnational phase of the PCT application, and the application was assigned Application No. 09/125,736. The request to commence the national stage included a preliminary amendment deleting from the original application “This application claims the benefit of U.S. Provisional Patent Application No. 60/036,649, filed January 29, 1997” and replacing such deletion with “This is the national phase of International Application No. PCT/US98/01446 filed February 17, 1998.”  On August 29, 2000, the ‘736 application issued as U.S. Patent 6,109,425 (the ‘425 patent”).

On April 30, 2002, Serenkin sought reissue of the ‘425 patent in an attempt to obtain the benefit of the previously forgone January 29, 1997, filing date of the ‘649 provisional application. The reissue application was finally rejected on November 4, 2002 as “the error which is relied upon to support the reissue application is not an error upon which a reissue can be based” under §251. Serenkin also sought a retroactive award of an earlier international filing date in the PCT application but was denied.

The Board sustained the Examiner’s final rejection of the reissue application on the basis that Serenkin had failed to perfect priority from the ‘649 provisional application because of a deliberate choice, which the Board construed as an error of judgment not correctable by reissue under §251, and not because of inadvertence, accident, or mistake, which are correctable by reissue under §251.

On appeal, Serenkin argued that the Board erred in determining that reissue was not an available remedy for the error of simply making the incorrect procedural choice during prosecution of the PCT application. Serenkin argued that the error would have been correctable by accepting the January 28, 1998, international filing date for the application with no figures, adding the figures to the national stage ‘736 application, and arguing that the drawings would not introduce new matter. Such avenue would very well likely have succeeded unless the drawings disclosed a patentable feature relied on during the prosecution which was not adequately disclosed in the ‘649 provisional application; however, such avenue was not pursued.  Serenkin also argued that the Board improperly relied on recapture cases to conclude that Serenkin’s error of judgment was not correctable under §251. The Federal Circuit reviewed Serenkin’s appeal de novo as a matter of law.

The Director of the USPTO responded that the Board correctly concluded that reissue was improper as Serenkin made a deliberate choice to forgo the earlier filing date in exchange for the benefit of including the drawings in the PCT application and that such deliberate choice is not the type of error correctable by reissue under §251.  Also, the Director asserted that the international filing date of February 17, 1998 was proper and to change the priority date of the ‘425 patent would be to violate the treaty agreement.

The issue for appeal is whether Serenkin’s “choosing of a later filing date during prosecution of the PCT application in exchange for the inclusion of the missing drawings constitutes an “error” that is correctable under §251.” The Federal Circuit emphasized the deliberateness and consciousness of Serenkin’s actions and concluded that such actions do not constitute correctable “error” under §251.

The Federal Circuit reviewed and distinguished case law to conclude that “the deliberate action of an inventor or attorney during prosecution generally fails to qualify as a correctable error under §251.” In In re Mead, 581 F.2d 251 (CCPA 1978), the inventor’s attorney deliberately chose to not file a continuing application during the pendency of the parent application so as to cover subject mater that was disclosed, but not claimed, in the original application, thereby breaking the chain of copendency. The Court in Mead concluded that in making the “conscious choice” of breaking the chain of copendency with the plan to claim the previously unclaimed subject matter in a subsequent application, the attorney knew, or should have known, that there could exist intervening references to render the unclaimed subject matter unpatentable. Further, the Court in Mead stated that the “intentional omission” of the unclaimed subject matter from the original application combined with the plan to claim such subject matter in a subsequently filed application did not constitute “error” under §251 as to allow correction would defeat the purpose of the copendency requirement of §120.

Similarly, in In re Orita, 550 F.2d 1277 (CCPA 1977), Orita argued that the failure to timely file a divisional application, after acquiescing to an Examiner’s restriction requirement, was a correctable error under §251. However, the Court concluded that the original patent was not partially inoperative due to the error of failing to file the divisional application, and that to hold that such failure was an error would be to render the copendency requirement meaningless.

Here, with regard to Serenkin, the Court disagrees with the Board’s characterization of this case as Serenkin’s failure to perfect priority.  Similar to Mead and Orita, Serenkin’s actions are more accurately described as an applicant intentionally and knowingly surrendering a right to a claim of priority, as evidenced by Serenkin’s communications with the USRO, in exchange for the benefit of including the drawings in the PCT application. And now, in light of time and necessity, Serenkin is unhappy with the conscious decision to forgo the right to a claim of priority dating back to the January 29, 1997 filing date of the provisional application.  

The Court distinguished Serenkin’s situation from the case law Serenkin cited since there was evidence that there was a deliberate decision to forgo any right to a claim of priority in exchange for the benefit of inclusion of the drawings.  In Brenner v. State of Israel, 400 F.2d 789 (D.C. Cir. 1968), the Court held that reissue under §251 was appropriate to correct the clerical error of failing to file a certified copy of the foreign application from which priority was claimed. In Fontijn v. Okamoto, 518 F.2d 610 (CCPA 1975), the Court concluded that reissue under §251 was appropriate to perfect priority when the patentee failed to notify the USPTO of earlier-filed copending applications during prosecution of the original application. And in Sampson v. Comm’r, 195 USPQ 136 (D.D.C. 1976), the Court held that reissue under §251 was appropriate where the patentee omitted the filing dates from prior applications but otherwise substantially complied with the statutory requirements.  The Court here states that the distinction between Serenkin’s situation and the above cases is the difference between “a genuine error, or mistake, and a deliberate, but subsequently found to be disadvantageous, choice.”

The Court was not persuaded that the Board’s reliance on recapture cases was in error as the argument fails to focus on the dispositive issue of this case, namely, whether Serenkin committed a remediable error under §251. Further, the Court stated that the recapture cases are illustrative of the types of errors that are correctable under §251.  

And finally, the Court rejected Serenkin’s argument that error under §251 may include “actions taken in full consciousness” as stated in In re Wadlinger, 469 F.2d 1200, 1207 (CCPA 1974). The Court here dismissed as dictum the statements in Wadlinger that errors correctable under §251 can include “mistakes” which the Wadlinger Court defined as including “to choose wrongly.” However, Serenkin’s reading of Wadlinger was too broad since the applicant in Wadlinger only sought reissue to include claims narrower in scope than those cancelled during prosecution of the original application. The Wadlinger Court stated that deliberate cancellation of a claim in an original application to secure a patent will prevent, in most cases, the applicant from obtaining the cancelled claim through reissue, but as the claims at issue were different and specifically narrower than the cancelled claims, reissue was appropriate.  As such, Wadlinger claimed less than he had a right to claim, which is an explicitly statutory reason for reissue. Again, the Court here emphasizes Serenkin’s deliberate decision to give up an earlier filing date in exchange for the benefit of inclusion of the figures, and the Court characterizes such conscious decision as different from Wadlinger’s claiming less than he had a right to claim. As such, Serenkin’s error is not correctable by reissue under §251.

The Federal Circuit held that remediable error correctable by reissue under §251 does not include a decision made intentionally and knowingly during the prosecution of an application. Here, Serenkin was informed of the possible effects of the decision to forgo the acceptance of the earlier filing date but evidently thought that the inclusion of the drawing was sufficiently important to give up such right to a claim of priority. Such a deliberate, conscious decision during prosecution is not an error correctable by reissue.

SIGNIFICANCE TO PATENT APPLICANTS

In re Serenkin highlights the latest in a long string of caselaw which limits an applicant’s ability to correct strategic errors or missteps taken during prosecution.  As such, common decisions, such as those relating to whether to file a divisional application after a restriction requirement, may not be repairable using instruments such as reissue.  While possibly not repairable using reissue, the possibility always exists of other mechanisms, such as reexamination, which allows corrections affecting validity of the patent and does not require the showing that the error is accidental.

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