Ex parte Wellerdieck

Informative decision only: persuasive authority, not binding precedent. When a reissue applicant seeks to expand the term of the original patent (here, by correcting continued prosecution applications filed under 37 C.F.R. § 1.53(d) to continuing applications under § 1.53(b) to obtain a 17-year term), the Board cannot grant it, because § 251 requires reissue "for the unexpired part of the term of the original patent," and reissue cannot extend term. Alternatively, a deliberate choice of filing route with no facts showing inadvertence is not correctable "error without any deceptive intention." No prior precedent directly addressed this issue; the Board called it a case of first impression. For the examiner, the decision supports rejecting reissue applications that seek term expansion, relying on the plain language of § 251 and MPEP § 1405. For applicants and appellants, a reissue cannot repair a CPA or § 1.53(d) filing choice to obtain a longer term, and a conclusory reissue declaration is treated as mere pleading. The Board relied on Federal Circuit authority, namely In re Weiler, 790 F.2d 1576 (Fed. Cir. 1986) and In re Serenkin, 479 F.3d 1359 (Fed. Cir. 2007), that deliberate prosecution choices are not correctable error under § 251, and on Medrad, Inc. v. Tyco Healthcare Group LPC, 466 F.3d 1047 (Fed. Cir. 2006) for plain-meaning statutory reading. LEGAL TEST OR STANDARD: Plain meaning of § 251: reissue is "for the unexpired part of the term of the original patent," so reissue cannot extend term. Alternatively, under § 154(c)(1) the 17-years-from-grant term applies only to a patent that results from an application filed before 8 May 1995. Finally, under Weiler and Serenkin, correctable error must be a genuine error, mistake or inadvertence, not a deliberate choice later found disadvantageous. TRIGGERING FACTS: The 219 patent issued on a second CPA filed under § 1.53(d) and claims § 120 benefit back to 1987, so it expires 20 years from the earliest referenced filing. The reissue application, filed 23 July 2002 per the caption and declared 23 July 2003, sought to treat the CPAs as § 1.53(b) filings to get 17 years from grant. The only evidence of error was a conclusory Reissue Declaration, and applicants meant to keep their § 120 benefit dates. KEY QUOTE: "We therefore AFFIRM the Examiner's rejection on the same basis as the Examiner: section 251 expressly forbids reissue expanding the term of a reissued patent." (p. 9) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed In re Weiler, 790 F.2d 1576 (Fed. Cir. 1986) and In re Serenkin, 479 F.3d 1359 (Fed. Cir. 2007), and distinguished the cases applicants cited as factually dissimilar. PRACTICE TIP: Do not file reissue applications to lengthen patent term or to undo a CPA or § 1.53(d) filing choice. If you assert inadvertent error, support the reissue declaration with specific facts showing how the error occurred, because a bare statement of error is mere pleading.