Reissue Attempt Fails in USPTO, Since Poor "Choice" Is Different From an Actual "Mistake"

In re Arnold B. Serenkin - (CAFC 06-1242) March 6, 2007

Serenkin filed a provisional application, and, prior to the one-year expiration, filed a PCT application claiming priority to the provisional document. Instead of filing a non-provisional US application, the PCT designated the U.S. as the designated receiving office, presumably to buy time to decide whether or not further prosecution was warranted.

When the PCT was filed, Serenkin's counsel forgot to include the drawings with the filing. About a month later (i.e., after the one-year bar date), the USPTO provided Serenkin with the choice of either submitting the drawings and receiving a new international filing date (and losing priority), or proceeding without the drawings and retaining the original filing date. In the event Serenkin chose the latter, the USPTO informed him that "any reference in the international application to these drawings will be considered non-existent" and "will not be taken into account for the purposes of the international processing."

Serenkin chose to file new drawings, accepting the later filing date, and later requested that WIPO republish the application with no priority claim and showing the late filing date. During the national phase, the application was amended to delete the reference to the provisional application. Ultimately, a U.S. patent issued.

For reasons not clear from the opinion, Serenkin decided to proceed (with new counsel) to file for a Reissue Application in an attempt to get back the previously-surrendered priority. The USPTO rejected the Reissue attempt, stating that no "mistake" was involved in the earlier application. The CAFC vigorously affirmed the USPTO:

Serenkin’s attorney acquiesced to the PCT examiner’s requirement of making a choice between the original international filing date and the drawings. He made a conscious decision to select the latter. Notably, unlike the attorney in Mead, the consequence of losing the January 28, 1998 filing date was not a fact discovered at some later point, but was an issue that was brought to the attention of Serenkin’s attorney by the [USPTO] at the time of his decision. Yet he proceeded to choose that option. Thus, this case is even less meritorious than Mead. Serenkin cannot now rely on the reissue statute, in light of a belated decision that he should have retained the original filing date, in order to undo the consequences of his attorney’s deliberate choice. As the court articulated in Orita, to do so would undermine the importance of the applicable rules set forth by our national patent laws and international patent treaties.

AFFIRMED