In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the USPTO formed the Central Reexamination Unit (CRU) and staffed it with 15 year+ Examiners and legal experts. Later, after the loss of Inter Partes Reexamination in 2012, the USPTO added all newly filed reissue applications to the CRU Examiner’s regime.

As a legally focused examining group, there is less technical specialization found among the electrical, chemical, and mechanical Examiners in the CRU. However, because design examination is unique and specialized, design reexaminations remain in the design examination group (TC 2900) and are conducted in consultation with CRU examiners and staff. The bar sees the CRU examiners as legal specialists and technical generalists. Understanding this distinction is critical to the practitioners that practice in front of the CRU. For example, requesters and patent owners need to ensure the nuance of claim terms and prior art teachings are readily digestible in their filings that involve more complex technologies than they may need to argue in front the technical art units.

The CRU also has a non-traditional examination team approach for all cases where a panel of three Examiners conference each Office action in each case—a lead Primary Examiner, a conferee Primary Examiner, and a Supervisory Patent Reexamination Specialist (SPRS). And many times a Quality Assurance Specialist, who is often an attorney, is added to the team to deal with complex legal issues that arise. What does this mean? This means that interviews are a little more complicated to arrange, be it telephone, video, or in person, because three schedules must be accommodated. But patent owners gain three people reviewing and considering all arguments, which should provide a more reasonable and consistent approach.

Sterne Kessler’s utility and design reissue, reexamination, and supplemental examination team will share practice tips and insights into prosecuting these proceedings before this specialized examination group within the USPTO.

This month, we discuss the similarities and differences between reexamination and reissue proceedings, co-authored by Jessica Harrison, a 25+ year USPTO veteran and former CRU SPRS.

In This Issue:

© 2024 Sterne, Kessler, Goldstein & Fox