By: Josh Sloat

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!
​

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.

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.
​

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. 

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.
​

By: Josh Sloat

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:​

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.
​

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!

By: Josh Sloat

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: