When patent owners are challenged at the Central Reexamination Unit (CRU), it appears many approach the defense of their patent no differently from its original prosecution, which our prior articles demonstrate is an incorrect assumption. Rather, patent owners and their reexamination counsel need to understand the vast difference between the purpose and goals of the examination core for original examination and the CRU.
The CRU has stated in many of its presentations and external media that it is tasked with protecting the public from patents that, upon further review, may have claims that should not have previously been found allowable. A challenge patent owners may face is that some in the CRU start their analysis with a present day view of the state of technology when determining whether they see the claims as overly broad or reciting only ubiquitous technical features. Sometimes it’s hard to remember a time when a feature was not ubiquitous or how hard a now simple appearing feature was to invent.
In order to start to move the needle in CRU thinking about obviousness and anticipation in the CRU prosecution, it is often beneficial to level-set back to the time the invention was made. Many patent owners and their counsel feel this is best done using an industry expert. While that is quite effective in many situations, the patent owner and their counsel should not overlook the influence the inventor(s) can play in demonstrating nonobviousness of a combination or lack of novelty in an anticipatory reference.
For example, an inventor can set the scene of why the invention was made, the challenges and trial/error of finding the solution protected in the patents, and potentially, evidence of secondary considerations post-patent through industry praise, copying, licensing, long felt need, failure of others, etc. While not always available at the time of original prosecution, reexamination usually takes place years later when this evidence is more easily developed and useful to the CRU. The inventor can also bring a passion about their innovations and bring them to life in a way an attorney and experts cannot replicate despite their passion for advocacy.
While some patent owners and their counsel believe the CRU may try to trip up an inexperienced inventor or that an inventor may say the wrong things during an interview, that is usually a short-sighted view. Most inventors at this stage of the patent life cycle are fully committed to maintaining their enforceable patents and can be educated and trained to effectively interview a case. Most CRU examiners are very receptive to hearing from inventors and their invention stories to better understand the state of the art at the time of the invention. And very few experts can provide the insights an inventor can towards why applied references were similar to the problem in the field before the inventor created the solution captured in the patent.
In the end, a tandem of inventor and expert in an examiner interview during a CRU prosecution is a powerful tool if wielded by a sophisticated reexamination counsel and patent owner. And that tool should be in every toolbox as you attempt to defend a patent at the CRU when the goal is to avoid amendment to protect damages.
