In deciding whether reissue is a viable medium for perfecting a claim to priority where an applicant made an initial poor choice, the U. S. Court of Appeals for the Federal Circuit held that the conscious choice of patent counsel to sacrifice an early priority date in order to include omitted drawings was not the type of "error" contemplated by the reissue statute, 35 U.S.C. §251. In re Serenkin, Case No. 06-1242 (Fed. Cir., Mar. 6, 2007) (Lourie, J.).
Patentee Serenkin submitted a Patent Cooperation Treaty (PCT) application, omitting eight sheets of drawings, to the United States Receiving Office (USRO) on the last day to claim priority from a corresponding U.S. provisional application. After Serenkin subsequently sent the omitted drawings to the USRO, the USRO gave Serenkin the choice of either submitting the drawings and receiving a new international filing date (i.e., the date the drawings were received) or proceeding without the drawings and retaining the original filing date. Choosing the later meant losing the priority date of the provisional application. Despite this consequence, Serenkin’s patent counsel chose to submit the drawings and take the later filing date. Thereafter, Serenkin’s patent counsel filed a U.S. national phase application, based on the international application, and, subsequently, a U.S. patent issued. After acquiring new patent counsel, Serenkin sought to reissue the U.S. patent in order to claim the priority date of the provisional application. Serenkin claimed procedural error on the part of the previous counsel. The U. S. Patent and Trademark Office (USPTO) Board of Appeals denied the reissue, and Serenkin appealed to the Federal Circuit.
On appeal, Serenkin argued that his original patent counsel erred by making the wrong procedural choice of accepting the new priority date rather than adding the drawings at a later date and contending the drawings did not constitute new matter. Thus, Serenkin argued the requirements of §251 were satisfied; in particular, that through error and without deceptive intent, the patent was partly inoperative or invalid.
The Federal Circuit rejected this argument, holding that reissue could not be used to perfect priority because the purported "error" asserted by Serenkin is not the type of error contemplated by §251. The Court reasoned that Serenkin’s attorney made a conscious decision to choose the benefit of including the drawings over the benefit of the original filing date. The Court characterized the case as one not about the failure to perfect priority, but "about an applicant who intentionally and knowingly surrendered his right to a claim of priority, in exchange for a benefit, and is now unhappy with his choice."
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