"Error of Judgment" Not Correctable Through Reissue

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.”

17 thoughts on “"Error of Judgment" Not Correctable Through Reissue

  1. This case reminds me of the underlying facts in Xechem Int’l, Inc. v. Univ. of Tex. M.D. Anderson Cancer Ctr., 382 F.3d 1324, 72 USPQ2d 1253 (Fed. Cir. 2004) (dismissal based on 11th amendment immunity).
    At the time of filing of the patent at suit, Xechem and Texas agreed that between Xechem and Texas’s collaborating researchers only Texas’s researcher should be listed as inventor. In return Texas agreed to license the patent only to Xechem so long as a reasonable royalty was paid. In the course of events Xechem later found itself unable to pay the royalty.
    Xechem was prepared to argue that not naming Xechem’s researcher as co-inventor was an error (a strategic error, one would suppose) made without deceptive intent (their intent was not to deceive, but to achieve certain legitimate business goals) and correctable under 35 USC 256.
    I am sorry they had to dismiss that case, I would have liked to have seen how it came out.

  2. Brian, I don’t get your point.

    If the mistake was discover before the 1 year priority ran out, then you don’t need “many things”. You simply file a second PCT with the correct priority and figures.

    Further, what is the point of submitting new Figures if all you are doing is showing what’s already in the spec? There’s no point to that.

    General rule for new pups . . .

    Most figures that are submitted to the PTO are a waste of time and money. There is no need for Figures if the concept can be described easily with words.

    For example, there is no need to submit a Figure of a flow chart that has 5 text boxes joined linearly in a process that has no branched. This is fluff that costs money.

  3. There are lots of things that applicant could have done if the mistake had been discovered within the one year date of the provisional.

    Because it was discovered after that date, the options were limited to the two identified in the opinion.

    In this case, the applicant simply chose the wrong option.

    I have personally experienced a similar fact scenario (a case in which someone filed the wrong drawings in the PCT).

    We made the right choice. You are allowed to provide new drawings that are strictly limited to what is described in the specification.

    Perhaps in this case, the drawings disclosed critical features that were not adequately described in the specification. In that case, the applicant made the only viable choice.

    I think the moral of the story is to always fully describe in writing every important feature of the drawings.

  4. The attorney should have accepted the filing without drawings, and, as a back-up, filed a second PCT with drawings and without the priority claim.
    Every designation in a PCT application becomes, on entry into the national stage, an otherwise regular national application in the country concerned, governed by the laws of that country. I would expect that many countries would permit addition of the original drawings, whether or not the provisional was incorporated by reference (the effect of that phrase varying from country to country) — an alternative would be to try to add drawings reflecting only the written disclosure. Associates in the countries of interest could advise (and perhaps the advice tested by early national filing) during the pendency of the first PCT, and a decision made whether to proceed with the first or the second PCT application, or both, on a country by country basis. The US would certainly allow the addition of the drawings if the provisional was incorporated by reference, and very likely if it was not.

  5. When I read it, the thought of administrative snafu, which caused the drawings to be lost did come to mind. Probably though, there was a transmittal that itemized the submission, and did not list drawings.
    Still, this is the sort of form-over-substance case that aggravates me. If you review enough file histories, you’ll see many with omissions and mistakes, that the patent offices let pass, and others where they become sticklers for minutiae.
    In this case, the inventor had disclosed the drawings in his provisional, his intent to have the drawing his regular application was clear, and to add the drawings later would not add any “new matter.” So, why bust the applicant, when some paralegal or admin person probably put the filing together and mailed it?

  6. I am Canadian and rely on US attorneys for advice; I hope you will all forgive my ignorance.

    The failure by the patent attorney to file the drawings with the PCT application, is that not clearly a mistake? Why should a later deliberate decision, made when it was too late to correct the mistake, alter the character of the original event?

    As for comments suggesting that an application can be amended to include information in a priority document, my understanding is that this can only be done if the priority document was incorporated by reference in the originally filed convention priority application.

  7. Kevin’s solution certainly looks like a good one.
    Regarding Gideon’s idea about not including the Figs in the PCT and amending to include them in the Nat’l phase: Would the PCT office allow a filing w/o Figs ? There would surely be an issue with the publication. I know they have been strict regarding informalities such as letters/numbers <0.32 mm, small margins and the like – so I am surprised they presumably were willing to accept a filing without Figs, that were obviously referenced in the Spec. Anyone know the answer to this ?

  8. K Noonan wrote:”The proper thing to do would have been to file the U.S. case not as a national phase but as a utility application that claimed priority to the provisional and the PCT”

    Yes! This is what I used to do as a standard practice for a few clients who insisted on provisionals.

    But this option was dead to them once they got past the one year mark.

    I have always disliked provisionals – they are, in my opinion, most often filed for all the wrong reasons.

  9. Until recently, you could not “incorporate by reference” to the provisional in a PCT. I understand that these rules are changing (see the post by Chris Singer in patentdocs.typepad.com on this issue).

    The proper thing to do would have been to file the U.S. case not as a national phase but as a utility application that claimed priority to the provisional and the PCT (since it was filed in the US Receiving Office). Then there would have been the opportunity to incorporate by reference under U.S. law. The problem when you go through the PCT route is that the U.S. legal branch gets so hung up on complying with foreign patent rules that they deny applicants rights they would have had under U.S. law.

    But the decision is right in line with earlier cases (like Bausch & Lomb v. Hewlett Packard): if you make a tactical choice during prosecution, you cannot correct it by reissue – the reissue statute is meant for mistakes not errors.

  10. Read the case.

    Not sure if the original patent attorney choked or what.

    I would have thought that the thing to do would have been to keep the original date without Figs, file national stage, amend spec to add figures based on disclosure in priority document.

    Anyone see any issues with that, other than the publication issue – i.e. other than the fact that the publication will not have the figures in it, and hence may be less effective as blocking art.

  11. I don’t get this.

    Some old timer want to jump in here?

    If you have claimed priority to the provisional, I would have thought that you could simply add the drawing to the new filing – after all, it was disclosed as of the priority date.

    Of course the better answer for the practitioner would have been to file two cases and suck up the cost of pursuing them both.

  12. Oops, I see now that there was an intervening PCT, which makes a difference. But if it were a regular app claiming a benefit of the provisional, wouldn’t incorporation by reference avoid the problem?

  13. Could the applicant have avoided this problem with a simple incorporation-by-reference of the provisional application within the regular app?

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