Patently Strategic Podcast: Petition Practice

Patent examiners can make mistakes. Patent office clerks can misfile paperwork and cause procedural errors. The software tools, document formats like DOCX, and the IT systems your application passes through can have bugs. What recourse do you have when quality issues creep in at this stage? This is where petition practice, fortunately, comes to the rescue.

Correcting USPTO Errors With Your Patent

Patent petition practice is the process of filing formal requests, referred to as “petitions,” with the U.S. Patent and Trademark Office (USPTO) or other relevant patent offices to address procedural and administrative issues that can arise during the patent application process. Filing petitions can be an essential step to correct course when rules are misapplied, procedural errors occur, administrative actions need to be reversed, or deadlines are missed.

As you’ll learn today, petition practice can also come with an enormously beneficial strategic bonus of giving USPTO management the opportunity – and even the obligation – to review the entirety of an application file wrapper. This means you can get a behind-the-scenes quality review from examiner management by filing a petition over procedural matters since, as a manager at the USPTO, if a case crosses your desk for any reason, it’s your responsibility to fix any problem, with the hope of not seeing the case again. And the numbers overwhelmingly bear this out – after final petition statistics demonstrate that 45% of the time, a case is allowed after filing a petition for a premature final office action!

Guest Hosts: Julie Burke and Michael Spector

While not something you’ll hopefully encounter often, when you do, petition filing is a process that requires a deep understanding of patent office rules and guidelines. To help us navigate this potentially patent-saving topic, we’ve enlisted the help of a guest host who’s spent considerable time in the belly of the beast. Julie Burke is a registered patent agent and former USPTO employee with 20 years of experience at the patent office. Julie rose up at the USPTO to become a Quality Assurance Specialist – the type of manager you’d call when your case got off track. During this time, she handled more than 900 petitions at the patent office! After leaving the USPTO, she founded her own consulting company, IP Quality Pro LLC, where she helps patent attorneys navigate complex situations in the patent system to protect their inventor’s ideas. This experience from both sides of the petition practice table has given Julie a level of access, experience, and insights shared by few in the industry, so we’re very fortunate to have her joining us today. Julie is also presently an advisor for Petition.ai, the only searchable database of U.S. patent prosecution petitions and associated documents. Julie is joined by the co-founder of Petition.ai, Michael Spector.

Episode Overview: Quality Patents Part 5

This is our final episode in a multi-part series focused on quality patents. The prior four episodes have all been about managing quality for everything in your immediate control – steps you and your practitioner should be taking before and after your patent is granted. But what about the last mile, where you’re turning your carefully crafted patent application over to the patent office for examination and prosecution? In today’s deep dive on petition practice, Julie, Michael, and our all-star patent panel discuss:

• How and why errors occur at the USPTO, especially during the examination process
• How petitions can be used to correct procedural errors
• Common myths about petitioning examiner errors
• Practice tips for getting the most out of petitioning
• How petitioning can be used strategically to get a management-level review of the patent application after final rejection

Discussion Panel

Julie and Michael are joined today by our always exceptional group of IP experts, including:

• Ashley Sloat, President and Director of Patent Strategy at Aurora
• David Jackrel, President of Jackrel Consulting
• Kristen Hansen, Patent Strategy Specialist at Aurora
• Ty Davis, Patent Strategy Associate at Aurora
• Marie Smyth, Patent Agent at Brake Hughes Bellermann LLP

Mossoff Minute: Debunking the Bad Patents Myth

In this month’s Mossoff Minute, Professor Adam Mossoff debunks the myth that the patent system is flooded with bad patents. For over a decade, there has been a narrative driven by Big Tech that the patent system is broken, with a high percentage of “bad patents.” Professor Mossoff discusses a recent rigorous study by the Sunwater Institute (a nonpartisan think tank) that reviewed 20 million patent claims and found that only 7% of patents are erroneously granted by the USPTO, while 18% of valid claims are erroneously rejected! We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.

Related Listening and Reading

To further explore the topics discussed, see the following past episodes and resources:

• Crafting Quality Patents. Part One in our patent quality series, focused especially on drafting.
• PTAB Survival Guide. Part Two in our patent quality series, focused on making your patents more resilient to IPR challenges at the Patent Trial and Appeal Board.
• Continuation Practice. Part Three in our patent quality series, focused on creating more robust and valuable patent families using continuations.
• ITC Proofing Portfolios. Part Four in our patent quality series, focused on setting your portfolio up for future success at the ITC should you need to block the import of infringing products.
• After Final Practice: Life After Final Rejection. Options available after receiving a final rejection notice from the patent office.