Petition Practice

11/5/2024

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.

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