By: Josh Sloat

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. 
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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. 

In breaking this all down in terms of how obviousness has been playing out in the courts, Dave, Kristen, and the panel discuss:

Kristen and Dave are joined by our always exceptional group of IP experts, including:

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.

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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By: Josh Sloat

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.
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​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.
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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.
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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:

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

Fee-Based Petitions

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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