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  • Home
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    • Patent Portfolio Strategy
    • Patent Search and Analysis
  • About
    • Team
      • Ashley Sloat, Ph.D.
      • Kristen J. Hansen, M.S.
      • Tiffany C. Miller, Ph.D.
      • Albert Du, J.D.
      • Alisa McCarthy
      • Joanna Moore
      • Josh Sloat
      • David Jackrel, Ph.D.
    • Testimonials
    • Work Examples
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​​Patently Strategic Musings

Aurora Welcomes Albert Du

4/24/2025

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By: Josh Sloat
Albert Du

Welcome Aboard

We're excited to announce that we're welcoming Albert "Al" Du to the growing Aurora family! Al joins us this Spring, starting his role as ​a Patent Strategist. Al is a USPTO-registered patent attorney with over 10 years of experience, serving as a patent attorney/agent at a number of law firms across a wide variety of technology areas. Al is one of the kindest spirits you'll meet and enjoys working with inventors to address the disconnect between the law and the process of innovation. Al brings incredible breath of insight, having worked on both sides of the prosecution table – now as a patent attorney and previously as an examiner at the USPTO.

Digital and Mechanical Expertise. Al holds a Bachelor of Science in Mechanical Engineering from Carnegie Mellon University and a Juris Doctorate from The Catholic University of America: Columbus School of Law. Al has drafted and prosecuted hundreds of patent applications for clients in the areas of software, blockchain, IoT, artificial intelligence, cloud computing, drone applications, vehicle automation, and medical devices.

In his spare time, Al enjoys time with his family (wife and two girls), hiking, and is always learning something new. Lately, Al has largely been focused on Brazilian jiu-jitsu and acoustic guitar!
​
Learn more or say hi
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Aurora Welcomes Dr. Tiffany C. Miller

4/24/2025

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By: Josh Sloat
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Welcome Aboard

We're excited to announce that we're welcoming Dr. Tiffany C. Miller to the growing Aurora family! Tiffany joins us this Spring, starting her role as ​a Patent Strategist. Tiffany has been a proud member of the Patent Bar since 2008. She is skilled in drafting patent applications that are focused on withstanding litigation and patent proceedings, which makes all the difference when it comes to enforcing your patents and overcoming patent validity challenges during patent enforcement proceedings. During her time running her own practice, Tiffany gained invaluable insights from managing portfolios ranging all the way from small solo inventors to Big Tech giants. 

Digital, Electrical, and Mechanical Expertise. Tiffany holds a Bachelor of Science in Biomedical Sciences, a Master of Science in Engineering Science, and a Ph.D. in Electrical Engineering from USF. She has expertly crafted and prosecuted patents across many innovation fields, including mechanical, life sciences, biotechnology, electrical engineering, biomedical, formulations, automotive, aviation, and semiconductors.

In her spare time, Tiffany enjoys spending time with family and flying a Cessna-172 as a solo pilot. 
​
Learn more or say hi!
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Cannabis Patents

4/21/2025

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By: Josh Sloat
Cannabis Patents

Cutting Through the Haze of the IP Landscape

In this month’s episode, we’re getting high on innovation with a deep dive into cannabis patents.  As more and more states relax restrictions on both medical and recreational uses of marijuana and hemp, the U.S. cannabis industry is projected to reach $50 billion in sales this year and over $74.6 billion by 2032! This rapid growth is happening despite immense challenges brought on by a complex and conflicting web of legal disparities between federal and state laws. These legal challenges include limited access to financial institutions and the inability to transport products across state lines, but what about patents? THC - the primary psychoactive compound in cannabis – was deemed a Schedule One drug under the Controlled Substances Act of 1970. This is the most restrictive category for drugs in the eyes of the federal government. And unlike most other property rights, patents fall squarely within federal jurisdiction. So what does this mean for inventors in the space hoping to protect their cannabis-related innovations?
​

Guest Host: James Gourley

For the answer, we turned to the expert in the space. There have only been five or so cannabis patent infringement cases ever filed in the United States, and our guest host today has worked on two of them. James Gourley is a partner at Carstens, Allen & Gourley, LLP, and a registered patent attorney with the United States Patent and Trademark Office. James served on the Dallas Bar Association's Intellectual Property Section Board before moving to Denver. He is a member of the State Bar of Texas and Colorado and is admitted to practice in the U.S. District Courts for the Northern, Southern, Eastern, and Western Districts of Texas, the District of Colorado, the Fifth Circuit Court of Appeals, and the United States Supreme Court. James has been a pioneer in the budding space of cannabis IP law and brings incredible depth of expertise, based on first-hand experience, to our conversation.
​

Episode Overview

To help make sense of all of this and so that your IP rights don’t just go up in smoke, James and the panel discuss:
  • Cannabis at the molecular level, specifically THC and CBD, and how the subtle differences underscore the complexity of cannabis legality.
  • The present legal framework around cannabis and the challenges that come via a patchwork of conflicting state and federal laws.
  • Cannabis IP issues surrounding obtaining and asserting both patents and trademarks, including insights from the cases James has personally litigated. 
  • And patent prosecution strategies to help ensure your rights are enforceable in a federal court.

​James leads this blunt conversation with our always exceptional group of IP experts, including:
  • Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
  • Dr. David Jackrel, President of Jackrel Consulting
  • Kristen Hansen, Patent Strategy Specialist at Aurora
  • Marie Smyth, Patent Agent at Brake Hughes Bellermann LLP
​

Mossoff Minute: Six New Anti-patent Bills

In this month's Mossoff Minute, Professor Adam Mossoff discusses six new anti-patent bills that the Senate Judiciary Committee recently advanced, despite being backed by bogus data. ​We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
​

How to Listen

​Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.
​

Resources.

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

Related Episodes
  • Predictable Results from Unpredictable Arts
  • Brand Protection with Mallory King

Related Reading
  • Opportunities for Cannabis (Marijuana) Plant Patents

Transcripts​
We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.
​
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Aurora @ the FIRST Championship

4/9/2025

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By: Josh Sloat
2025 FIRST Championship

Join us with FIRST in Houston

We're honored to announce that we've been invited to speak next week at the FIRST Robotics Championship in Houston, TX! This massive event is the world championship for elementary to high school-aged youth engaged in competitive robotics. The program and domain are near and dear to us, so we couldn't be more thrilled to be a part of it. Dr. Ashley Sloat worked closely with her son's FIRST team to help their young inventors develop patent rights via a provisional patent application for their State Championship qualifying Innovation Project. We're now looking forward to sharing insights gained with the rest of the FIRST Robotics world!
​

IP Essentials for FIRST Robotics

Learn about the power of patents and how you can incorporate patenting into your FIRST Robotics programs, from FLL to FRC. For LEGO League Teams, pursuing a provisional patent can be a great addition to your Innovation Project. For all ages, learning about the patent process at a young age is a massive head start for those heading into STEM careers. We'll even be exploring success stories from FIRST teams that used IP to commercialize their innovations! Learn from an IP professional who’s guided everyone from inexperienced elementary teams to seasoned pros through the empowering process of patenting!

Session Number: 134
Date of Session: Wednesday, April 16, 2025
Time of Session: 4:00pm - 4:45pm
Room Location: 350DEF
​

2025 FIRST Championship Details

Founded in 1989 by inventor Dean Kamen, FIRST (For Inspiration and Recognition of Science and Technology) is a global nonprofit organization that prepares the world's youth for the future through a suite of inclusive, team-based robotics programs for ages 4-18.

Hosted by FIRST, the 2025 FIRST Championship is a culminating, international event for its youth robotics competition season and an annual celebration of science, technology, engineering, and math (STEM) for the FIRST community as we prepare young people for the future.

The 2025 FIRST Championship takes place April 16-19 at the George R. Brown Convention Center in downtown Houston. 
​

At the Intersection of Things We Love

In addition to our mission of promoting innovation by helping inventors secure high-quality patent rights, we're also proud mentors and sponsors of First LEGO League (FLL) Team #64530 from Traverse City, Michigan. The Bricks (4) Brains team is made up of inspiring young elementary students who've already filed for their first patent and are diligently working their way toward earning a place at this incredible international competition.
​
Attend!
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ParkerVision v. Rule 36

3/13/2025

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By: Josh Sloat
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The Battle for Dignity and Due Process

If a court stripped away your property rights, wouldn’t you at least want an explanation? The answer is obvious, but the reality is appalling. The practice of revoking patent rights on appeal without explanation has been happening to inventors at the Federal Circuit Court of Appeals (CAFC) at an alarming rate. In over 43% of PTAB cases on appeal at the CAFC, inventors receive a single-word response – “AFFIRMED” – rather than an opinion. This practice is referred to as the application of Rule 36 and, in cases involving the PTAB, amounts to the seizure of property from an administrative agency without any reasoning provided by a constitutionally created Article III court. 


ParkerVision has filed a petition for a writ of certiorari with the Supreme Court and recently submitted a reply brief in an attempt to get the Supreme Court to take up this innovation-crippling practice. In the coming days, the justices are scheduled to discuss the petition in private conference, where they will vote on whether to take the case.
​

Our Guests on the Way to SCOTUS

To help us unpack Rule 36 practice and what ParkerVision is hoping to do about it, Dr. Ashley Sloat and I have enlisted the assistance of the three people closest to this case and its implications:
  • Jeffrey Parker, CEO of ParkerVision – an absolute pioneer in wireless technology.
  • Amit Vora, appellate litigator at Kasowitz Benson Torres, representing ParkerVision in its petition for cert with the Supreme Court.
  • Juliette Fassett from the Fair Inventing Fund, advocating for inventors’ rights. Juliette is an inventor herself, with over 30 years of experience building consumer product companies.
​

Episode Overview

Through an illuminating and sometimes heartbreaking interview, Jeff, Amit, and Juliette walk us through the core issues of what comes down to some very fundamental questions about both due process and inventor dignity. Along the way, we discuss:
  • Innovation focus. The significance of ParkerVision’s innovations.
  • State of the law. Rule 36, §144, and the PTAB.
  • ParkerVision's cert. What sets this cert apart from prior attempts to get the Court to take on Rule 36.
  • Dignity. The importance of judicial respect and the dignity of a reasoned explanation for patent holders who’ve had their rights stripped away.
  • Due process. Why judicial reasoning is key to what makes a court decision a valid court decision.​
  • The chilling effect that application of Rule 36 has on patent law, investment, and innovation.
​

How to Listen

Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.
​
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How to Watch

In addition to everywhere you listen to podcasts, this complete video interview is available on our YouTube channel. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok alongside our monthly Mossoff Minutes where we provide updates and quick takes on movements in patent reform, significant court rulings, and innovation policy happenings, all with the assistance of Professor Adam Mossoff. 
​

How to Help

if you're wondering what you can do to help, you can always write your legislators should the courts let us down here, but in the meantime, you can do what we're doing – and that's sharing these concerns and the very real human stories behind them to help to raise broader public awareness. Please, like, subscribe, and more importantly, share! This matters for us. And it REALLY matters for our kids. 
​

Resources

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

Related Episodes
  • Why Patents Exist with Professor Adam Mossoff
  • PTAB Survival Guide
  • American Inventor Horror Story
  • Patent Wars: Innovators, Revolutionaries, and the Race to Reform

Related Reading
  • ParkerVision's Petition for Cert with SCOTUS
  • ParkerVision's Rule 36 Reply Brief

Transcripts​
We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.
​
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Dealing with Rejection

1/29/2025

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By: Josh Sloat
Patent application rejection

Overcoming 101, 102, 103, and 112

So, your patent application got rejected. Now what? 

In this month’s episode, we’re talking about rejection. Specifically, the type that comes from the patent office in the form of an intimidating sounding three-digit number when your application gets denied by an examiner. Some time after submitting your application, it goes into a process with the patent office called examination. This is the part of your patent’s prosecution journey where an examiner reviews your application for conformance to technical and legal requirements. If – and usually when – the examiner finds a problem, they will issue an office action that contains specific reasons for the rejection. You then have the opportunity to respond to and overcome the rejection, using various strategies we’ll explore today.  
​

​Reasons for rejection fall under four sections of U.S. Statute, Title 35. Sections 101, 102, 103, and 112 dictate that patents must be eligible, useful, novel, nonobvious, and enabled (or properly described). Patents can be rejected or later invalidated if one or more of the claims are determined to be otherwise. 

Rejection on the basis of these four statutes is fortunately just the beginning of the delicate process of negotiating this important exchange that has promoted and enabled our innovation economy since the dawn of our country. Patent application rejection is common, expected, and can be used very strategically – but perhaps counterintuitively – to end up with the broadest possible protection, while also making sure there’s something in it for the public!
​

Episode Overview

In today’s episode, Patent Office Relationship Guru Daniel Wright leads a discussion with our all-star patent panel, delving deeply into defining, coping with, and then dealing with patent application rejection. Along the way, Dan and the panel discuss:
  • Why patent applications are rejected.
  • The specific types of rejection.
  • Strategies for how to overcome each, including some wonderful insider insights specifically on how to work with examiners on the human level to overcome rejection.

Mossoff Minute: Patents Aren't Monopolies

In this month's Mossoff Minute, Professor Adam Mossoff debunks the myth that patents in the United States are monopolies that impeded innovation and block economic growth. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.
​

Next Episode Preview: ParkerVision and Rule 36

We’re excited to announce that we'll be releasing a very special episode next month, in which we’ll be interviewing Jeffrey Parker, the CEO of ParkerVision. ParkerVision is filing a U.S. Supreme Court Cert Petition challenging the Federal Circuit’s practice of issuing one-word affirmations (Rule 36) in cases that hold life-altering implications for inventors. ParkerVision’s petition aims to establish a baseline of judicial respect for patent holders, as judicial reasoning is key to what makes a court decision a valid court decision. 

How to Listen

Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.
​

Resources

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

Related Episodes
  • Patent Anatomy: What's in a patent?
  • Why Patents Exist with Professor Adam Mossoff
  • Patent Searching (How to Find Prior Art)
  • After Final Practice: Life After Final Rejection
  • Fortifying Life Science Patents (101 and 112)
  • Software Patents (101)
  • From Alice to Axle
  • Obviousness Case Law Review (103)
  • SCOTUS in Focus (112)
  • Unpredictable Arts (112)

Transcripts​
We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.

Slides
For the visual learners out there, we also like to make our presenter slides available for your reference.​
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Don't Waste Your Money on Patents

1/15/2025

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By: Josh Sloat
Patent Waste

Ensuring Quality at Every Step

You’ve put too much into your innovation to come up short when its life depends on the measure of your patent. In the eyes of the patent office, judges, juries, PTAB admins, ITC officials, and IP-savvy investors, it doesn’t really matter how great, novel, or universe-denting your invention is if it is not properly defined and protected by your patent. The difference between a good patent and a bad one is the difference between a valuable, assertable, defendable property right – and a worthless vanity plate.

Fundamental Tension. Patents are not inexpensive and startups need patents when they can least afford them. This fundamental tension leads to two kinds of waste:​
  • Patents aren’t for everyone and depending on circumstances, don’t always deliver ROI.
  • When they make sense, corners are often cut with short-sighted decisions that save money now, but dramatically devalue the patent and its actual usefulness later.
So, when they do make sense, being intentional about quality is paramount in maximing your investment and avoiding waste. And the quality that goes in up front is directly proportional to the leverage it will give you later when you need it most. But what goes into a quality patent, and where possible, how do you get it without breaking the bank? Answering these questions will be the focus of our discussion.
​

20Fathoms Lunch-and-Learn

Please join us at 20Fathoms in Traverse City for this free lunch-and-learn presentation. This is an in-person event and space is limited. Please register. Lunch will be provided!

Register
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We're hiring!

1/4/2025

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By: Josh Sloat
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Medical Device and Software Patent Agent

We're looking for a Medical Device and Software Patent Agent to help with patent portfolio management, application drafting, prosecution, and strategy. This is an exciting and critical step in our incredible growth trajectory – one sparked mainly by client love and referrals! 

This is a fully remote, full-time or part-time role (your choice) with a flexible work week. The position is salaried for a guaranteed 30 hours per week (part-time) or 40 hours per week (full-time) and payable at an equivalent hourly rate for any hours above. Benefits include 401k with match and paid time off. 

Who you are: You have an undying love for people and supporting inventors and team members with the highest level of quality, high-touch service. ​Ideally, you’ll also be a good mix of the following:
  • Scientist or Engineer. Registered USPTO Patent Agent with an industry or academic background in medical devices and software with some experience in mechanical devices, machine learning, or related technical disciplines being an added bonus. Illustrative subject matter includes patent preparation and prosecution projects with emerging companies focused on domains including software-enabled medical devices, mechanical medical devices, catheters, robotics, consumer devices, fitness equipment, etc. 
  • Quality-focused, highly efficient practitioner. 4+ years as a patent agent who is technically skilled and comfortable drafting and reviewing utility and design patent applications that exceed client expectations. 
  • Insatiable tech geek. Ability to review and analyze technically complex documents, including scientific papers, patents, and technical specifications.
  • Hyper-organized, crisp communicator. Excellent organizational, verbal communication, and writing skills.
  • Intuitive collaborator. Team player with proven ability to work with dynamic and diverse groups of engineers, inventors, and business and strategy teams.
  • Hungry for autonomy. Can self-direct, manage, and motivate. Takes personal ownership and responsibility for driving high-quality results and consistently hitting deadlines.
  • OCD about detail. Strong attention to detail and accuracy.
Learn more and apply!
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Case Law Review: Obviousness

11/26/2024

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By: Josh Sloat
Section 103 obviousness

For the final episode of our 2024 season, we’re bringing it all together with a review of recent patent case law and how these decisions could impact your strategy going forward. The state of patent law – and its implications for the success of your business – is an ever-evolving landscape that combines the perspectives of the patent office, the judicial interpretations of the courts, and the legislative inputs of Congress. Broader situational awareness of movements on all three fronts will help not only with getting your IP right granted now but also in formulating a patent in a way that will maximize its odds of assertability and overall value when you later need it. 
​

Section 103: Nonobvious Inventions

Kristen Hansen, Patent Strategy Specialist at Aurora, and Dr. David Jackrel, President of Jackrel Consulting, lead today’s two-part discussion with our all-star panel, dissecting recent court decisions impacting the core patenting issue of obviousness. Section 103 of U.S. Code, Title 35 governs how this concept applies to patentability. It essentially states that an invention cannot be patented if the differences between your claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was conceived. So determining obviousness is more than simply establishing that the invention doesn’t already exist and that it isn’t documented elsewhere. Its conception must also not have otherwise been obvious to those in the field at the time. 

If you’re thinking that sounds awfully subjective in the present and highly susceptible to hindsight bias in the future, you’d be right. Beyond being one of the four main drivers for patent application rejection at examination time, obviousness is also one of the primary vectors used by the Patent Trial and Appeal Board for invalidating patents via Inter Partes Review, so it’s essential to get this right so as to limit your patent’s potential invalidation surface area. 

Episode Overview

In breaking this all down in terms of how obviousness has been playing out in the courts, Dave, Kristen, and the panel discuss:
  • Inter Partes Review and how some PTAB strategy deviates from conventional patenting wisdom when it comes to obviousness.
  • Recent obviousness case law decisions.
  • Practice tips related to obviousness including analysis of how previously invalidated claims impact future claims, the dangers of being your own lexicographer, and the strategic importance of drafting backup positions in your specification.
Kristen and Dave are joined by our always exceptional group of IP experts, including:
  • Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
  • Ty Davis, Patent Strategy Associate at Aurora
  • Daniel Wright, Patent Strategist at Aurora
  • Marie Smyth, Patent Agent at Brake Hughes Bellermann LLP

Mossoff Minute: PREVAIL Advances

In this month's Mossoff Minute, Professor Adam Mossoff discusses some incredibly exciting news about the PREVAIL Act, which is designed to bring much overdue reform to the Patent Trial and Appeal Board. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.

How to Listen

Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.
​

Resources.

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

Related Episodes
  • PTAB Survival Guide
  • Patent Anatomy: What's in a patent?​​
  • Patent Searching (How to Find Prior Art)
  • Patent Wars: Innovators, Revolutionaries, and the Race to Reform
  • American Inventor Horror Story: 10 Years of AIA and the PTAB
  • CAFC Chronicles: Costly Tales of Claim Construction Fails (Case Law)
  • Top Inventor Mistakes (pitfalls of not searching prior art)
​
Transcripts​
We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.

Slides
For the visual learners out there, we also like to make our presenter slides available for your reference.​
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Petition Practice

11/5/2024

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By: Josh Sloat
Petition Practice

Correcting PTO Errors With Your Patent

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.
​

​Patent petition practice is the process of filing formal requests, referred to as “petitions,” with the 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.
​

Guest Hosts: Julie Burke and Michael Spector

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 PTO 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 PTO, 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 also leverages this expertise as an expert witness in court on patent office procedures and practices – and her highly read investigatory articles are regularly published on sites including IPWatchdog, LAW360, and The Hill. Prior to her extensive career in IP, Julie earned a PhD in Biochemistry from the University of London College of Science, Technology and Medicine and a BA in Cellular and Molecular Biology from Johns Hopkins University. Julie is also presently an advisor for Petition.ai, the first searchable database of US 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 PTO, 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 complete review of the patent application after final rejection

Patent Petition Types

While this episode largely focuses on after final petition practice, we did want to point out that there are many other flavors of petitioning. Below are detailed descriptions of some of the most common and useful types of petitions. Some are more conventional and are used during normal prosecution. Others are used to move through the prosecution process faster. 
 
No Fee Petitions
  • To Make Entity Status Large from Small Entity: If meet certain income thresholds, have filed four or fewer patent applications, and are otherwise a small entity, your filing fees with the USPTO can be further discounted to a micro entity rate. 
  • First-Time Filer Expedited Examination Pilot Program: If this is your first filing a patent application, congratulations! You may also be eligible to apply for this petition to have your patent application reviewed more quickly. The qualifications include also being entitled to micro entity status and the filing not being a U.S. national stage, continuation, or otherwise claiming priority to another foreign case. Note that this petition should be filed after receiving your filing receipt in case the office objects to any elements of your application, needing correction. 
  • To Join Patent Prosecution Highway (PPH): If you received a favorable review of similar claims in another jurisdiction or country that prescribes to the PPH, you can amend your claims to track to the favorably reviewed claims in the U.S. and file this petition to have your claims reviewed in light of the prior favorable review, usually in a faster than typical time frame. 
  • To Make Application Special on Grounds of Age or Health: If you are 65 years or older, the USPTO will grant your patent application special status so that it can be reviewed quicker than the usual speed.
  • After Final Consideration Program 2.0: This was a great petition provided by the USPTO for many years, allowing examiners to further review your application after final to hopefully move it to allowance. Unfortunately, the USPTO determined that it was costing them too much money so they are discontinuing this petition as of December 14, 2024. 
Fee-Based Petitions
  • To Join Track One (Prioritized Examination): If you pay the USPTO an extra fee and file this petition, the USPTO guarantees a final disposition (e.g., final office action, notice of allowance, etc.) on your patent application within one year. 
  • Revival Based on Unintentional Delay in Abandoned Application: If you’ve unintentionally abandoned your application, and it does have to be unintentional, you can revive your patent application, for a fee of course.

How to Listen

Patently Strategic is available on all major podcasting directories, including Apple Podcasts and Spotify. We're also available on 12 other directories including Stitcher, iHeart Radio, and TuneIn, so you should be able to find us wherever you listen to podcasts.
​

Resources.

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

Related Episodes
  • ITC Proofing Patents: Quality Patents Part 4
  • Continuation Practice: Quality Patents Part 3
  • PTAB Survival Guide: Quality Patents Part 2
  • Crafting Quality Patents
  • Patent Anatomy: What's in a patent?​​
  • After Final Practice: Life After Final Rejection​
​
Transcripts​
We're also providing computer-generated transcripts for improved accessibility and additional reference opportunities.
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