Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE EDWARD C. HIPKINS, SR. AND FRANK M. LOCOTOS
Appeal No. 90-2250
August 7, 1991
Application for Patent filed September 9, 1987, Serial No. 07/094,685, for the reissue of U.S. Patent No. 4,477,209 issued October 16, 1984, based on application Serial No. 06/374,515, filed May 3, 1982. Anchor Bolt Assembly.
Russell D. Orkin et al. for Appellants
Primary Examiner--Dennis L. Taylor
This is an appeal from the final rejection of original claims 1 and 2, all the claims in the subject reissue application.
The appellants' invention relates to an anchor bolt assembly of the type used in mine roofs. However, since an understanding of the invention is not required in order to decide the issues raised by the rejection, there is no need to describe this device or to reproduce either of the appealed reissue claims.
The application at bar was filed by assignees H & S Machine and Supply Co., Inc. (H & S) and F.M. Locotos Co., Inc. for reissue of U.S. Patent No. 4,477,209 (the patent) issued to Edward C. Hipkins, Jr., and Frank M. Locotos. The specification, drawings and claims of the reissue application remain the same as those of the patent upon which the reissue application is based. The error the patentees seek to correct by reissue involves the false signature of co-inventor Locotos on the original declaration of the patent. Appellants now admit, nearly three years after the issuance of the original patent, that this signature was not made by Mr. Locotos but instead was made by Linda Scott, an employee of H & S and the daughter of Mr. Edward C. Hipkins, Sr., president of H & S.
There are no outstanding rejections based upon prior art under 35 USC 102 and/or 35 USC 103. The only outstanding rejection of the claims is under 35 USC 251. As stated on page 3 of the Examiner's Answer:
Claims 1 and 2, all the claims in the application, are rejected under 35 USC 251, as being based on an improper reissue application. There is no showing that the patent is inoperative by reason of a defective specification or drawing, or by reason of the patentees claiming more or less than they had a right to claim in the patent. To the contrary, the specification, drawings and claims of the instant reissue application are identical to the corresponding specification, drawings and claims of the patent.
It appears ... that the main questions to be decided in this appeal is [sic, are] whether or not Mr. Frank Locotos' signature was improperly signed (forged) by someone else in the original application, and if so, is its correction proper subject matter for a reissue application.
*2 35 USC 251, in pertinent part, provides for the reissue of defective patents:
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less then he had a right to claim in the patent....
As pointed out by the court in In re Wilder, 736 F.2d 1516, 222 USPQ 369, 370 (Fed.Cir.1984):
There are two distinct statutory requirements that a reissue oath or declaration must satisfy. First, it must state that the patent is defective or partly inoperative or invalid because of defects in the specification or drawings, or because the patentee has claimed more or less than he is entitled to. Second, the applicant must allege that the defective, inoperative, or invalid patent arose through error without deceptive intent.
Our reviewing court has stated on several occasions that the reissue statute is remedial in nature and to be liberally construed. For example, see In re Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed.Cir.1986). Nevertheless, "not every event or circumstance that might be labeled 'error' is correctable by reissue." Weiler, 229 USPQ at 675. In keeping with the remedial nature of the statute, reissue has been sanctioned on several occasions to correct defects in patents that were not the result of errors in the specification, drawings or claims. For example, see Brenner, Comr. Pats. v. The State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C.Cir.1968) (reissue granted where deceptive intent not an issue and where the only ground urged was failure to file a certified copy of the original foreign application to obtain the right of foreign priority under 35 USC 119 before the patent was granted); Sampson v. Comr. of Pats., 195 USPQ 136 (D.D.C.1976) (patentee entitled to have amendments entered under § 120 and § 251 for limited purpose of correcting filing dates of prior abandoned applications in chain, where invention is not challenged and equity so dictates); A.F. Stoddard & Co., Ltd. v. Dann, Comr. Pats., 564 F.2d 556, 195 USPQ 97 (D.C.Cir.1977) (although not expressly authorized by Title 35, patent owner is entitled to correction substituting true inventor for innocently but incorrectly named inventor by reissue of issued patent); In re Bennett, 766 F.2d 524, 226 USPQ 413 (Fed.Cir.1985) (defective execution of a timely filed reissue application seeking to obtain broader claims may be corrected after two year period for filing a broadening reissue has passed). Thus, the case law clearly indicates that a change in the language of the patent's specification, drawings or claims is not an absolute prerequisite for correction of a defective, inoperative or invalid patent under 35 USC 251 if it be established that the error arose without any deceptive intention.
*3 In the present application, the defect in the patent resides in the execution of the declaration. Specifically, the name of one of the co-inventors was deliberately signed on the patent application declaration by another. The signature was known to be false. This situation does not fall within the narrow exceptions approved by the courts in the above noted cases. Moreover, unlike the above noted cases, the present reissue appellants have not established that the false execution was an error without any deceptive intention. Under the circumstances of this case, we cannot say that reissuable error has occurred.
The record before us shows the following:
1. Based on advice of their patent attorney, appellants believed that the application that resulted in the '209 patent had to be filed no later than the very early part of May 1982 in order to avoid a potential statutory bar (Request for Reconsideration dated August 15, 1989 (Paper No. 8), pages 2 and 5; Appeal Brief, page 6).
2. Co-inventor Locotos was "unavailable" at the end of April 1982 (reissue declaration, page 2).
3. Just prior to May 3, 1982, Linda Scott, an employee of H & S and the daughter of Hipkins, Sr., spoke to someone on the telephone who identified herself as being from the office of Mr. Orkin, appellants' patent attorney. The caller indicated that the '209 patent application papers had been in the possession of H & S for a long time, that the papers needed to be processed (i.e., filed in the PTO) and that H & S had to get them in (declaration of Scott, paragraphs 2, 3 and 4).
4. About this time a telephone conversation took place between Locotos and Hipkins, Sr. According to Hipkins, Sr.'s uncorroborated version of this conversation, Locotos instructed Hipkins, Sr. to go ahead and sign Locotos' name to the necessary documents. Locotos does not specifically recall whether or not such authorization was given (reissue declaration, page 3).
5. At the urging of her father, Edward C. Hipkins, Sr., Linda Scott falsely signed the name of co-inventor Frank M. Locotos on the declaration of the '209 patent application in order to "get it in the works" (Scott declaration, paragraph 5). Also, see page 3 of the reissue declaration.
6. On its face, the declaration of the patent application represents that all the statements appearing therein were attested to by Frank M. Locotos and that the document was signed by Frank M. Locotos himself. Further, the declaration on its face states that the date of execution was April 14, 1982, some two weeks prior to the above noted conversation between Linda Scott and the representative from appellants' patent attorney.
As we understand it, it is the appellants' position that they have properly established reissuable error because they innocently thought that someone other than the inventor could sign the inventor's name to the declaration of the patent application if authorized to do so. We do not believe that the record supports such a position. Besides, even if these were the facts, they do not establish reissuable error.
*4 The rules of practice in patent cases set forth only a limited number of circumstances where someone other than the actual inventor may make the necessary oath or declaration for a patent application. 37 CFR 1.42 pertains to filing a patent application on behalf of a deceased inventor. 37 CFR 1.43 pertains to filing a patent application on behalf of an insane or otherwise legally incapacitated inventor. The only remaining circumstance where someone else can make the necessary oath or declaration on behalf of an inventor is covered by 37 CFR 1.47, which permits filing on behalf of a missing inventor who refuses to execute an application, or who cannot be found or reached after diligent effort. There is no dispute in the present application that these circumstances do not apply. Moreover, there is no provision in the rules of practice that allows someone other than the inventor to sign the inventor's name to the oath or declaration. Hence, neither Locotos nor Hipkins, Sr. could have "authorized" Scott to sign Locotos' name to the declaration of the patent application.
Appellants urge that they could not be expected to know that each named inventor must personally execute the patent application declaration because, as laymen, they were not familiar with the appropriate patent laws. Appellants' failure to appreciate the consequences of their actions by itself is not enough to establish reissuable error. [FN1] Moreover, Hipkins Sr. states on page 2 of the reissue declaration that the final application transmitted to him by patent attorney Orkin "was mailed ... with instructions to have the inventors read and sign the application." Hipkins, Sr. was therefore aware that the application had to be read by the inventors, which was not done by Locotos, and signed by the inventors, which also was not done by Locotos. In addition, the declaration of a patent application is on its face a legal document. A reasonably prudent person with good intentions certainly would have sought the advice of his patent attorney before having someone else falsely sign another's name to such a document. Under these circumstances, we simply cannot accept the appellants' apparent position that the conduct of the involved parties may be excused because they "did not appreciate the effect of having a third party sign an inventor's name in April 1982 when Application Serial No. 374,515 was signed" (reissue declaration, page 3).
The reissue declaration states on page 3 that Hipkins, Sr. only "recently" learned that the application was executed on behalf of Locotos, yet it was Hipkins, Sr. himself who avers that it was he who talked to Locotos on the telephone to get instructions to sign Locotos' name and that it was he who requested his daughter to sign Locotos' name to the original declaration. Therefore, it was known to Hipkins, Sr. from the beginning that his daughter, Linda Scott, falsely signed the name of co-inventor Locotos to the original application declaration. While the record does not establish that Locotos knew who signed his name, he nevertheless knew of and consented to the plan to have a third party falsely sign his name, if we are to believe the uncorroborated statements made by Hipkins, Sr. in the reissue declaration. It was not until after the false execution came to light in litigation of another patent (brief, page 7) that appellants decided to come forward with the truth, nearly three years after the issuance of the original patent. It is also noteworthy to observe that Linda Scott could readily have signed the declaration in a manner to indicate that Locotos did not actually execute the document (e.g., Frank M. Locotos by Linda Scott), but chose not to do so. Instead, she chose to sign in such a fashion that third party observers, such as PTO personnel, would believe that Locotos himself signed the document or at the very least that the declaration was not signed by another on Locotos' behalf. In addition there is the matter of the date of execution of the declaration. The original declaration of the patent indicates that it was executed on April 14, 1982. However, Scott states in her declaration that the telephone calls she received from patent attorney Orkin's office alerting H & S of the need to get the application signed took place just prior to May 3, 1982. This inconsistency is not explained. Nor are we told of the whereabouts of Locotos in the more than two weeks between April 14 and May 3, 1982. Rather, we are only told that he was "unavailable," despite the fact that Hipkins, Sr. was apparently readily able to contact him by telephone at the end of April.
*5 The record simply does not support the appellants' averment on page 2 of the reissue declaration that the improper execution of the declaration arose "without any deceptive intent" on the part of Locotos and Hipkins, Sr. Rather, the record shows that (a) appellants believed the patent application should be filed before early May 1982 in order to avoid a possible statutory bar, (b) co-inventor Locotos was "unavailable" at the end of April 1982, (c) appellants' belief that the application needed to be filed inspired them to have Linda Scott falsely sign the name of co-inventor Locotos to the declaration, and (d) the declaration, by failing to indicate that the signature was made "by Linda Scott," on its face falsely represented that the named inventor had himself executed the declaration. From our perspective, these facts constitute ample evidence from which to conclude that appellants, by having Scott falsely sign the name of Locotos to the declaration of the '209 patent application, sought to mislead the PTO in order to gain the material advantage of a more favorable filing date.
Appellants have placed great emphasis on the above noted Stoddard case. In particular, appellants maintain that the present case is even more compelling for the allowance of reissue than was Stoddard because in the present case Locotos' typed name appears on the original declaration whereas in Stoddard "the wrong person's name was on the declaration and the wrong person signed it" (brief, page 26; emphasis in original). Appellants accordingly see no reason the Stoddard decision should not be extended to cover the present situation even if, as stated by Assistant Commissioner Tegtmeyer in In re Shibata, 203 USPQ 780 (1979), the Stoddard holding is an "extremely limited one." The Stoddard case is simply not controlling. There it was undisputed that the error was inadvertent and innocent. Such simply is not the case here.
Although not relied upon by the appellants, we also note Aktiebolag v. Waukesha Cutting Tools Inc., 640 F.Supp 1139, 1 USPQ2d 2002 (E.D.Wisc.1986), wherein the court granted Aktiebolag's § 256 motion to correct the named inventorship of a patent from Ryosuke Hosoi to Toshiaki Hosoi and Ryosuke Hosoi under 35 USC 256, even though Aktiebolag admitted that Toshiaki Hosoi had signed the original application in Ryosuke Hosoi's name. However, the facts of Aktiebolag are distinguishable from those of the present case since the reissue statute was not involved and since the court was not concerned with the presence or absence of "error without any deceptive intention."
Upon consideration of the entire record, it is our conclusion that the appellants have failed to properly establish "error without any deceptive intention" as required by 35 USC 251. Accordingly, the rejection of claims 1 and 2 under 35 USC 251 is proper. Since our rationale is somewhat different from that relied upon by the examiner, we will designate our position to be a new rejection of claims 1 and 2, based on 35 USC 251, under the provisions of 37 CFR 1.196(b).
Any request for reconsideration or modification of this decision by the Board of Patent Appeals and Interferences based upon the same record must be filed within one month from the date hereof (37 CFR 1.197).
With respect to the new rejection under 37 CFR 1.196(b), should the appellant select the alternate option under that rule to prosecute further before the Primary Examiner by way of amendment or showing of facts, or both, not previously of record, a shortened statutory period for making such response is hereby set to expire two months from the date of this decision. In the event the appellants elect this alternate option, in order to preserve the right to seek review under 35 U.S.C. 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome.
If the appellants elect prosecution before the examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to us for final action on the affirmed rejection, including any timely request for reconsideration thereof.
No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
BOARD OF PATENT APPEALS AND INTERFERENCES
Ian A. Calvert
Robert F. Stahl
Harrison E. McCandlish
Irwin Charles Cohen
Lawrence J. Staab
FN1. See Weiler, 790 F.2d at 1583 n. 4, 229 USPQ at 677-78 n. 4, wherein the Federal Circuit noted that:
Weiler's reliance on allegations of the inventor's ignorance of drafting and claiming technique and counsel's ignorance of the invention is unavailing. Those allegations could be frequently made, and, if accepted as establishing error, would require the grant of reissue on anything and everything mentioned in a disclosure. [Applicant] supplies no facts indicating how the ignorance relied on caused any error as the basis of his failure to claim the subject matter [in dispute].
On this basis, the court affirmed the denial of the reissue application as to the claims in question.
BY ORDER OF THE BOARD OF AUGUST 16, 1991
In order to clarify any uncertainty that may exist with regard to the appellants' options concerning what action, if any, they may take in this application as a consequence of the decision by the Board of Patent Appeals and Interferences (Board) mailed August 1, 1991 (Paper No. 14), the following is noted.
*7 Since the Board designated its decision as an affirmance under 37 CFR 1.196(b), as provided for by that rule, the decision is not considered final for the purpose of judicial review. The only options with regard to the Board's decision which are available to the appellants at this time, are to seek reconsideration under 37 CFR 1.197(b), or to have the matter considered by the examiner provided an appropriate amendment and/or a showing of facts is submitted.