Terms and Concepts
Central Reexamination Unit (CRU)
In 2005, the PTO created a dedicated Central Reexamination Unit (CRU) to ensure quality and consistency of reexamination proceedings, and to reduce pendency. The CRU handles all reexaminations, regardless of technology, and all legacy reexaminations have been transferred to the CRU from their respective technology centers. Mr. Greg Morse is the current director of the CRU, who assumed his new duties on June 23, 2008.
In 2006, the CRU included 31 patent examiners, three supervisory patent examiners, and 10 support staff. When Mr. Morse took over in June 2008, the CRU ranks had grown to a total of 53 patent examiners with 10 in the biological/chemical group, 12 in the mechanical arts, and 31 in the electrical arts. There are now 58 examiners and six supervisors. In short, the CRU continues to grow in response to increased use of reexaminations as a viable post-grant vehicle to challenge patent validity.
The examiners in the CRU are selected from the ranks of the PTO examiner corps and have an average of 17 years of examining experience. Many of the CRU examiners also have advanced technical degrees and/or law degrees. The CRU examiners are evaluated on work quality and workflow, not on production quotas as is the case with the regular examiner corps. Assignment to the CRU is recognized throughout the PTO as professional advancement; morale throughout the CRU is high, and turnover is low. The examiner position in the CRU is currently “temporary,” but the recent annoucement for job openings indicates that the position is “transitional.” It remains to be seen whether the position will become “permanent” and thus subject to performance metrics as is the case with examiner positions in original prosecution.
In the CRU, preparation of each Office action involves two patent examiners and one supervisory patent examiner. One of the patent examiners prepares the Office action. The second patent examiner and the supervisory patent examiner review the Office action before the Office action is mailed. The three examiners confer to resolve any disagreements.
Interaction Between CRU and OPLA
As noted above, the CRU works closely with the Office of Patent Legal Administration (“OPLA”) to resolve petitions to the director, disputes involving the “real party in interest” petitions to merge proceedings, and the like. The CRU also works closely with the OPLA in examining the practical effects of its own rules and in examining ways to streamline reexamination proceedings to reflect today’s realities.
At least one OPLA official has acknowledged that, while the present rules worked well in the past when there were relatively few reexaminations, they are “clunky” in today’s realities. Therefore, the CRU and OPLA are currently looking to “streamline” some of the rules.
Some practitioners have nicknamed the CRU as the “Central Rejection Unit.” Is there any practical truth to this moniker [Reexamining Inter Partes Reexam, Institute for Progress (April 2008)]? With the much greater resources devoted to the reexamination process by the CRU, coupled with the impact of KSR Int’l Co. v. Teleflex, Inc. in terms of how printed publications and patents will be treated by the CRU, and the presence of the third party requester throughout the process in inter partes reexaminations, speculation abounds that the chance of a claim surviving the reexamination process is becoming less and less as time goes on. Is this speculation correct in practice?
Some critics argue that the CRU is unfairly inclined to find claims invalid in reexaminations, especially where these claims have been subjected to extensive prior litigation and have survived significant validity challenges in the courts. They contend that, because the CRU essentially does no searching but instead relies on the parties to do this task, the examiners do not appreciate the innovation captured by the claimed invention because they are “spoon fed” the prior art by the requester.
Moreover, critics contend that the CRU tends to “rubber stamp” the reexamination request filed by the requestor in inter partes proceedings and that the first Office action almost always rejects all of the claims. Recently, however, the CRU has granted several requests for reexamination where the order did not adopt all SNQs and/or proposed rejections. Some contend that any “rubber stamp” improperly shifts the presumption to the patent owner that the claims are prima facie invalid. They also contend that the patent owner essentially can only put forth evidence of nonobviousness in response to the first Office action and that trying “to prove a negative” is daunting at best, and a practical impossibility at worst. Critics argue that this approach subverts the constitutional basis for patents.
Finally, some critics contend that the PTO is pressuring the CRU to be very negative towards claims in reexamination to perhaps mollify powerful political forces at work. It is argued that those political forces seek to weaken valuable patent rights owned by non-practicing entities, which happen to encompass entities such as universities and R&D innovation companies. Some perceive that these entities are being ganged up on and attacked unfairly in the courts. The employees of the PTO interviewed by the authors believe that this criticism is unfounded. These employees counter that any pressures from the PTO are limited to meeting deadlines and timelines.
Some critics argue that practitioners are abusing the reexamination process by filing papers for intentional delay or by turning the petition process into a form of motion practice before OPLA.
The authors interviewed high level OPLA, CRU and BPAI officials as well as several judges. These individuals provided extensive criticisms and suggestions on how practitioners could improve in terms of dealing with the PTO and the courts in reexaminations. The authors have provided these criticisms and suggestions in the applicable sections, rather than providing a long laundry list here. Suffice it to say, the bar needs to improve its practices and procedures in a manner commensurate with what the PTO and the courts need to do.
- Statutory Mandate of “Special Dispatch”
- Office of Patent Legal Administration (OPLA)
- Petitioning for Extensions of Time
- 50-Page Limit on Office Action Responses
- Prior Holding of Validity
- Final Non-Appealable Holding