Petition Practice: Correcting PTO Errors With Your Patent

​​Patently Strategic - Patent Strategy for Startups

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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.
** 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?
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 **
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. 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.
** Discussed Links **
⦿ Quality Patents Part 1: https://www.aurorapatents.com/blog/quality-patents
⦿ Quality Patents Part 2: https://www.aurorapatents.com/blog/ptab-survival-guide
⦿ Quality Patents Part 3: https://www.aurorapatents.com/blog/continuation-practice
⦿ Quality Patents Part 4: https://www.aurorapatents.com/blog/itc-proofing-patents
⦿ After Final Practice: https://www.aurorapatents.com/blog/new-podcast-after-final-practice
** Follow Aurora Patents **
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1. Intro (00:00:00)

2. Julie Burke intro (00:07:27)

3. Michael Spector intro (00:09:58)

4. Petition.ai (00:10:32)

5. USPTO inconsistencies (00:21:08)

6. Behind the scenes at the USPTO (00:25:30)

7. Mistakes can be made at the USPTO (00:26:42)

8. Using petitions to correct errors (00:27:33)

9. Myths about petitioning (00:28:07)

10. Challenges after final (00:28:33)

11. After final toolbox (00:28:56)

12. Petitioning procedural errors (00:30:02)

13. Entire application review by management (00:30:27)

14. Petitionable error examples (00:30:51)

15. MPEP guidance and instructions (00:31:19)

16. Petitionable errors cont'd (00:32:07)

17. MPEP guidance and instructions cont'd (00:36:57)

18. Tips for working with examiners (00:43:47)

19. Practice tips (00:47:39)

20. Dismissed as moot (00:57:01)

21. Petition.ai overview (01:00:00)

22. When to petition (01:01:45)

23. Outro (01:08:30)