March 2007

"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.”

BPAI Appeal Statistics

I have pulled-together recent appeal statistics from a sample of patent applications published in early 2003.  These applications, some of which are now patented, were, for the most part, initially filed in 2001 and 2002.  The sample-size is admitedly small, but the results are striking.

Beginning with a sample of just under 10,000 filed patent applications, I found 729 cases where the applicant had filed a notice of appeal.  Out of those 720, only 50% (363) ended-up actually filing an appeal brief. That drop-of is not surprising since many prosecuting attorneys use the notice of appeal procedure as a way to “buy time” while deciding whether to file a continuation, appeal, or RCE. 

Reopening Prosecution: Two salient numbers pop-out from the cases where the applicant Rejected as Defective or Incompletefiled an appeal brief: (1) Of the 363 cases where the applicant filed an appeal brief,  25% (90) were rejected on procedural grounds after the PTO found the appeal brief defective or incomplete. Once the appeal was properly filed, Examiner’s filed written answers in less-than-half of the cases.  Although not-yet-documented, the presumption here is that in the other 50% of cases, the rejection was withdrawn and prosecution was reopened.

The problem, it seems, is all too often, the appeal is the first time when the parties actually take time to really understand the invention and the prior art. (This goes both for the applicant and the examiner). The PTO has recognized the problem of prosecution being reopened in so many cases.  As a result, the Office created the pre-appeal-brief conference

Patent BPAI Pre-Appeal Conference Pre-Appeal Conferences: My sample included 82 requests for pre-appeal brief conferences.  In 7% (6) of cases, the applicant won and the rejection withdrawn.  In a larger portion of cases, 28% (23), applicant won the day, but prosecution was reopened. In 55% (45) of cases, the PTO thought its position was strong-enough to proceed to the BPAI. 5% (4) were defective and the remaining 6% (5) are unknown (presumably still in process).

BPAI Outcomes: General BPAI decision statistics are available here. In my sample of 56 decisions, the outcomes were virtually evenly-split. 46% affirmed; 45% reversed; and 9% affirmed-in-part. 

Patently-O Tidbits

Patentable Subject Matter in Boston:

  • On March 16, 2007, I’ll be speaking at Harvard Law School as part of the Journal of Law & Technology’s 20th Anniversary Symposium titled: “Progress of Science and Useful Arts” My panel will be discussing “The Outer Limits of Patentable Subject Matter.” Registration is FREE.

LexisNexis and Amazon

  • If you are not satisfied reading this free version of Patently-O, you can now get the same content through LexisNexis for a fee. Lexis has begun archiving content from a select group of “web blogs” including Patently-O.  Unfortunately, they will not be including some of our best content — reader comments.
  • On the other hand, if you are satisfied with this free version of Patently-O, you should think about using the site as a portal for purchasing your books and other junk from Amazon. If you click on an Amazon link from my site, I get about 6% for any item that add to your cart during that session.  (I only need about $2.6 million in sales to reach to the income level of a first-year associate).  
  • In response to a comment, I’ll mention that the books linked through Amazon are all books that I have read or at least browsed through and found redeeming value. In some cases, like Alan Durham’s book and Patent-it-Yourself, I have the earlier edition.  I have given Patent-it-Yourself to a number of clients, including corporate counsel and inventors.  For the most part, they followed some of the advice in the book, but none of them decided to ‘patent it themselves.’

Philips Infringement Case Stayed Until ITC Appeals Exhausted

In re Princo (Fed. Cir. 2007).

28 U.S.C. § 1659 is designed to prevent separate proceedings on the same issues occurring at the same time in both Federal District court and before the International Trade Commission.

In this case, the district court had stayed its proceedings pursuant to Section 1659, but then reopened the litigation after ITC issued a general exclusion order prohibiting importation of infringing R/RW compact discs.

On writ of mandamus, the CAFC found that the stay should not be lifted until the ITC order is final and all appeals exhausted.  In making its decision, the CAFC also provides an extensive analysis of when it will (and will not) hear appeal prior to a final judgment.

Notes:

Rumors Continuations & Claims

Rumors: A usually reliable (but anonymous) source recently spoke to one of his reliable sources who is close to several high-level PTO officials.  According to the chain of gossip, implementation of the much-discussed continuation and claim restrictions (in modified form) is now “highly likely.”  Apparently, the exact rules are to-be kept under lock-and-key until published this summer. Once published, there will be no opportunity to get continuations-in under the old rules. I have been assured by the PTO that that there will be at least 30-60 days advance notice to the public.

This new rumor flies in the face of another rumor that comes through Hal Wegner. According to Professor Wegner: “A highly reliable source has just reported that Under Secretary Jon W. Dudas during a Silicon Valley swing this past week has assured industry leaders that the continuation rules are – in the words of one observer – “dead as a doornail”.” It appears now that the more likely rumor is “alive and well.”

I guess we’ll just wait and see. . .