Edward J. Brenner, Commissioner of Patents, Appellant, v. the State of Israel, Ministry of Defence, Appellee, 400 F.2d 789 (D.C. Cir. 1968)

This is an appeal from a judgment of the District Court in a proceeding under 35 U.S.C. § 145. It involves the proper interpretation to be given to two sections of the Patent Act of 1952.¹  There are no facts at issue. It is stipulated that appellee without deceptive intention neglected to file in the Patent Office the "certified copy of the original foreign application" for a patent which Section 119 requires to be filed "before the patent is granted," if the applicant wishes to avail himself of the benefits of the prior application. Less than three weeks after the U. S. patent was issued by the Patent Office, appellee discovered that, due to a clerical error, it had failed to file the required certified copy. It acted immediately to repair its mistake by sending the Patent Office the necessary copy, and by applying for a reissue of its patent with the priority rights included.

The Board of Patent Appeals considered appellee's reissue application, but concluded that it could not be granted, because of the language in 35 U.S.C. § 119²  which makes the filing of a certified copy a specific prerequisite for the obtaining of a right of priority. The District Court, on cross-motions for summary judgment, granted appellee the relief requested. It found that 35 U.S.C. § 251,³  which provides for the reissue of defective patents, was sufficiently broad in application to overcome the literal language of 35 U.S.C. § 119, and to entitle appellee to a reissued patent to include the priority rights which Section 119 gives to applicants who have previously obtained certain foreign patents.⁴ 

We affirm the District Court's decision. There is force in appellant's contention that Section 119 is a mandatory provision which specifically and without equivocation prohibits the granting of a priority right unless its procedural requirements are fulfilled. We also understand the purpose which arguably underlies these stringent requirements, i. e., all the information which a potential infringer or copier may need in order presently to ascertain his rights should be collected in one place where it can easily be found and evaluated. Nevertheless, to ascertain the will of Congress⁵  in this very narrow context, care must be taken before concluding that it really intended that a trivial clerical error, such as the one which occurred here, should operate forever to deprive a patent applicant of a priority right to which he would otherwise be entitled.

We do not think it did. In fact, Congress placed in the Patent Act another provision, Section 251, which in our view controls the disposition of this case. This section provides that " [w]henever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid * * * by reason of the patentee claiming more or less than he had a right to claim in the patent," the Commissioner shall grant him the reissue of the patent with the faults corrected. The plain meaning of this section would seem to cover this situation. The patent issued was partly inoperative (insofar as it did not include the priority right), and the patentee (by failing to file the certified copy, although it did inform the Patent Office of its intention to claim the priority right and the existence of the foreign patent appears on the face of its application) did claim less than he had a right to claim. In any event, the purpose of this section is to allow patentees to correct inadvertent errors without penalty other than the payment of a small fee. This was such a case.

Neither party to this appeal, although pressed by us to do so, came forward with a lucid explanation of the practical consequences which might ensue from this resolution of their dispute. Particularly in this litigation it is difficult to discern what substantial interest appellee is protecting. It has been over a year since it received the U.S. patent and, under 35 U.S.C. § 102(b), it is impossible for anyone to challenge the patent's validity in an interference proceeding. Hypothetically, however, it is perhaps still possible that appellee may wish (or need) to use the priority right in order to establish a prior art reference,⁶  or that it seeks assurance that it will be able to use the priority right in the event it is called upon to assert the validity of the patent in a future infringement suit.⁷ 

The Patent Office, on the other hand, has not convinced us that granting appellee the priority right through reissue would inevitably operate unfairly to the detriment of third parties. First, it should be pointed out that hypothetical third parties might have been disadvantaged only during the short period between the granting of the patent and its reissue. Second, a potential infringer or copier interested in appellee's patent would, upon looking at the Patent Office records, have immediately been placed on notice that an identified foreign patent existed and that claim for priority founded upon it had been filed; he should not, with this knowledge, have been entitled to rely solely upon appellee's technical failure to file the certified copy of the foreign application.

We need only assay the interests of such hypothetical third parties, however, to the extent that we are satisfied that granting the reissue would operate unfairly to deprive them of the fruits of reasonable action taken in reliance on a faulty application. We think that it is altogether possible that Section 252⁸  can be read broadly enough to protect a deserving third party in this kind of situation. In any event a court sitting in equity, in a dispute between a patentee who had received a reissued patent with the priority right included and an infringer who had, with no warning of any kind, honestly relied on the original patent without the priority right, could justly accommodate these conflicting claims in the light of the particular circumstances.

Affirmed.