The mission of the CRU is to ensure high quality, objective and timely processing of reexamined patents. The CRU endeavors to comply with the “special dispatch” requirements of the reexamination statutes. Reexamined patents are assigned to examiners in the CRU who were not previously involved in the examination of the original patents or in prior reexamination proceedings of the patents. The examiners work in teams of three including a Special Program Examiner (SPE). Patentability review conferences are conducted at each point in the reexamination decision making process in order to reach a consensus in decision making on claim patentability.
Currently, the CRU has 48 primary examiners working in 3 Units. Gregory Morse, who was appointed the Director of the CRU on June 23, 2008 has 5 SPEs and fourteen technical support staff. Mr. Morse, in turn reports to Technology Center Director Irem Yucel.
The CRU will only reexamine patent claims for which reexamination has been requested for which a substantial new question of patentability has been established. MPEP § 2240 (citing Sony v. Dudas) The CRU makes the determination as to whether the new or previously presented patents and printed publications would have been important to a reasonable examiner in deciding whether to allow the patents claims. The new or previously presented patents and printed publications must be noncumulative to the information previously considered during the original patent examination.
The CRU works closely with the Office of Patent Legal Administration (OPLA) directed by Brian Hanlon to address issues associated with, intra alia, petitions, merger of proceedings, and return of improperly submitted papers.
For fiscal year 2009 ending September 30, 2009, 658 ex parte reexamination and 258 inter partes reexamination requests were filed. 92% of ex parte reexamination requests and 95% of inter partes reexamination requests were granted. Of the patents that were subject to reexamination recent trends show that more than 60% of these patents are involved in concurrent litigation. Average pendencies to reexamination certificate for these proceedings were 25.2 and 35.8 months, respectively. For ex parte reexamination concluded proceedings, 25% had all claims confirmed, 11% had all claims canceled and 64% had claim changes. For inter partes reexamination concluded proceedings, 6% had all claims confirmed, 54% had all claims canceled or disclaimed and 40% had claim changes.
These USPTO reexamination statistics demonstrate that reexamination proceedings conducted by the CRU quite often result in patents having their scope of protection narrowed; accounting for the increased popularity of third parties filing reexamination requests, especially where the reexamined patents are in concurrent litigation.
Moreover, although amendments to claims in reexamination can only be narrowing amendments, if the patent for which reissue is two years or less old, a broadened reissue application can be filed. In this way, use of patent reissue together with merged reexamination proceedings may provide useful procedural and tactical advantages to a patent owner.
However, whether to merge such proceedings or to suspend action on one of them is a decision that is made by the USPTO sua sponte based on the relative timing of the filings of the reissue application and the reexamination requests, the stage of the respective proceedings, whether a continuation or RCE of the reissue application has been filed, whether the reexamination proceeding is ex parte or inter partes, and whether the patent owner will consent to a stay of the examination of the reissue application pending the outcome of the reexamination proceeding. Normally, the USPTO favors merger to prevent inconsistency in the handling of the proceedings, if conducted separately.
A merger order issued by the USPTO in merged proceedings sets forth the conditions for how the merged proceedings will be conducted. If the merged proceedings involve inter partes reexamination, the third party’s participation will be limited to the issues applicable to reexamination. This permits the patent owner to have other issues such as those applicable to broadened reissue claims dealt with on an ex parte basis. Moreover, the merged proceedings may be assigned to an examiner in the Technology Center handling the reissue application rather than to examiners in the Central Reexamination Unit (CRU). This could be advantageous to the patent owner, especially when considering the fate of the patents subjected to inter partes reexamination by the CRU where for completed inter partes reexamination proceedings only 6% have survived with all claims confirmed. Currently, the Office appears to disfavor merger of inter partes reexamination proceedings and may instead choose to stay the reissue application proceeding in favor of such reexamination proceedings.
However, there are also significant disadvantages to the rules of reissue examination practice. Patent reissue permits the correction of defects relating to subject matter eligibility, utility, written description, enablement, and clarity of the original claims. During reexamination, these same defects may only be considered in claims which are amended or added by the reexamination, and not in the originally patented claims. See MPEP §2258. Thus, a patentee should seriously consider filing a reissue application where the issued patent, for example, issued prior to In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008), as a significant risk of invalidation may exist for certain method claims if litigated.
Additionally, in reexamination, it is Office practice to examine only those claims specifically identified in the reexamination request. On the other hand, patent reissue will typically include a comprehensive examination of all claims. 37 C.F.R. §1.176 (See MPEP §1440)
Merger provides interesting opportunities for patent owners and third party requesters alike, (via serial patent reexamination requests). However, the question of whether or not concurrent USPTO proceedings should be initiated in any given case, requires a close analysis of the facts.
Further information regarding the advantages and disadvantages of merger will be presented at the Patent Law Institute Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2010.
By Scott A. McKeownThe inter partes reexamination estoppel provision of 35 U.S.C. § 315(c) is a familiar one to many patent practitioners. This provision is often cited as the primary justification for disfavoring inter partes reexamination over other post grant patent strategies. Yet, as ITC actions become increasingly utilized for their expediency in reaching a conclusion, further consideration should be given to the applicability of this estoppel to Federally created Agencies.
| November 5, 2009
Specifically, § 315(c) provides:
“[a] third party requester…is estopped from asserting at a later time, in any civil action arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.”
Importantly, this estoppel provision is explicitly limited to “civil action[s] arising in whole or in part under section 1338 of title 28.” Section 1338 of title 28, in turn, merely provides that “[t]he district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks.” In other words, 28 U.S.C. § 1338 gives original jurisdiction over patent cases to the Article III district courts, but says nothing about Article I courts, such as the ITC. Accordingly, the inter partes reexamination estoppel provision of 35 U.S.C. § 315(c) only applies to civil actions in the district courts, and does not apply to ITC investigations.
Since the inter partes reexamination estoppel provision does not apply to ITC investigations, respondents are free to raise the same invalidity arguments in both fora -- in effect, to get two bites at the apple.
This means that respondents in Section 337 investigations at the ITC should consider the potential benefits to be gained by initiating a concurrent inter partes reexamination proceeding at the USPTO. While the odds of obtaining a stay of ITC proceedings in favor of a concurrently filed reexamination proceeding is for the most part, unlikely, the ability of the reexamination requester to actively participate in the reexamination may lead to the creation of intervening rights, prosecution history estoppel, and non-infringement positions relative to the patent at issue. In this way, the requesting party may offer to “back out” of participation in the reexamination as part of an overall settlement strategy; thereby leading the Patentee in a much favorable position to recover the patent.