In re Serenkin (Fed. Cir. 2007).
When Serenkin’s attorneys filed his PCT application, they apparently failed to include the drawings that had been submitted in the original provisional. A month later, the US Receiving Office (USRO) informed Serenkin of the problem, but by then it was too late — the provisional had expired.
Serenkin was given a choice: (1) keep the earlier priority date but proceed without the drawings; or (2) include the drawings but accept the new filing date. Serenkin decided that the drawings were important and explicitly accepted the new filing date. The application eventually entered the US national phase and issued as US Patent No. 6,109,425.
Of course, Serenkin needs the earlier date — through new counsel, he filed for reissue seeking to obtain the benefit of the earlier date.
The PTO balked – finding that Serenkin had
“failed do perfect his claim for priority from the provisional … Moreover [Serenkin's problems did not arise] because of inadvertence, accident, or mistake, which are correctable by reissue under Section 251, but because of a deliberate choice, which is construed as an error of judgment.”
On appeal the CAFC agreed with the Patent Office because Serenkin’s deliberate and explicit acceptance of the later filing date was not an “error” as required by the statute.
“[T]he deliberate action of an inventor or attorney during prosecution generally fails to qualify as a correctable error under § 251.”
The CAFC distinguished other cases where the applicant erroneously failed to perfect priority:
“[W]e note that the present case, in essence, is not about the failure of an applicant to perfect a claim for priority. [Rather], it is about an applicant who intentionally and knowingly surrendered his right to a claim of priority, in exchange for a benefit, and now is unhappy with his choice. We find that to be a significant distinction over the cases cited by Serenkin.”