Patently Strategic - Patent Strategy for Startups
Patently Strategic - Patent Strategy for Startups
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.
** 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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[00:00:00] Josh: G'day and welcome to the Patley Strategic Podcast, where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion amongst experts in the field of patenting. It is for inventors, founders, and IP professionals alike, established or aspiring. And in this month's episode, we're talking about petition practice.
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 practitioners 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 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 [00:01:00] 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. Filed before application prosecution, During prosecution, and even after grant, petitions can help applicants request actions or decisions not automatically granted under routine procedures.
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. And as you'll learn today, petition practice can come with an enormously beneficial strategic bonus of giving USPTO management the opportunity, and even the obligation, to review the entirety of an application file wrapper.
This means you can actually get a behind the scenes quality review from examiner management by filing a petition over procedural matters since, as a manager at the PTO, if a case crosses your desk for any reason, it's your responsibility to fix any [00:02:00] problem with the hope of not seeing that case again.
And the numbers overwhelmingly bear this out. After final examination statistics demonstrate that 45 percent of the time a case is allowed when petitioning the USPTO after receiving rejection via a final office action. While not something you'll hopefully encounter often, when you do, petition filing is a process that requires a deep understanding of patent office rules and guidelines.
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. [00:03:00] This experience from both sides of the petition practice table has given Julie a level of access, experience, and insight 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 IP Watchdog, Law 360, and The Hill. Prior to her extensive career in IP, Julie earned her Ph. D. in biochemistry from the University of London College of Science Technology Medicine.
And a B. A. in Cellular and Molecular Biology from Johns Hopkins University. Julie is also presently an advisor for Petition. ai, the first searchable database of U. S. patent prosecution petitions and associated documents. Julie is joined today by the co founder of Petition. ai, Michael Spector. 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 [00:04:00] errors, Practice tips for getting the most out of petitioning and how petitioning can be used strategically to get a complete review of the patent application after final rejection.
Julie and Michael are joined today by our always exceptional group of IP experts including Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora. Dr. David Jackrell, President of Jackrell Consulting. Kristen Hansen, Patent Strategy Specialist at Aurora. Ty Davis, Patent Strategy Associate at Aurora.
And Marie Smith, Patent Agent at Brake Hughes Bellarmine LLP. While this episode largely focuses on after final petition practice, we did want to point out that there are many flavors of petitioning. We'll be including detailed descriptions of some of the most useful in the show notes. And if after final practice is a concept you're not yet familiar with, I highly recommend you listen to our after final practice episode from Season 1 that explores options for life after receiving a final rejection of your patent application.
We'll also be sure to link to that episode in the show notes. Part of today's conversation also makes reference to the After Final Consideration Program 2. 0. This was a great after final petition provided by [00:05:00] the USPTO for many years. Unfortunately, later this year and after our recording, the USPTO decided to discontinue this petition option as of December 14, 2024, stating reasons of cost.
As an editorial aside, one of our guests does discuss a particular software product related to petitioning. As a general matter of practice, No references to specific tools constitute endorsements or recommendations on the part of Aurora or the podcast. Further, we do not advertise on or monetize this podcast in any way, so everything you hear is purely informational and hopefully educational.
Now before jumping in with the panel, we'd like to take you to the next installment of the Mossoff Minute, a monthly segment that builds on our Pet Wars episode. It features short conversations with Professor Adam Mossoff, providing updates and quick takes on movements in patent reform, significant court rulings, innovation policy happenings, and occasional Star Wars references.
In this month's Minute, Adam debunks the myth that the patent system is flooded with bad patents.
[00:05:55] Adam Mossoff: For well over a decade, we've been hearing the narrative that the patent system is [00:06:00]broken, that the innovation economy is swamped with so called bad patents, patents that the U. S. Patent Trademark Office should not have issued.
And we sometimes hear percentages of 50%, 60 percent of patents that are issued by the U. S. Patent Trademark Office should not have been granted, that are in fact invalid patents. Well we finally have a evidence based rigorous study of how the U. S. Patent and Trademark Office reviews patent applications by the Sunwater Institute and it has utterly debunked this narrative of a database of 20 million different patent claims that it reviewed.
It found that 7 percent of patent claims are granted by the U. S. Erroneously, whereas 18 percent of patent claims are actually rejected erroneously. So what they found is that our patent office is actually at a much higher rate rejecting patent claims that should be issuing as legitimate patents on legitimate innovations.
So this is a really important development, really important study that finally brings evidence based data back [00:07:00] to our understanding of how the patent system is functioning as opposed to policy based narratives so that our government officials can properly engage in evidence based policy making. Stay tuned for more.
[00:07:12] Josh: Thanks Adam. We're also publishing clips from the Mossoff Minute as short form videos on Instagram Reels, YouTube Shorts, and TikTok. You can check out these shorts and follow us at Aurora Pettens on all three platforms. And now, without further ado, take it away, Julie.
[00:07:26] Julie Burke: Happy to kick it off. My name's Julie Burke.
I was a former, uh, USPTO employee, uh, Patent examiner in TC 1600. My background's biochemistry, so I was familiar with the biotech chemical pharmaceutical practices. 20 years there, rose up to become a quality assurance specialist. I was that manager you'd call when your case was off track, and believe me, these patent practitioners never called me to say their case is perfect and fine, and we love our 35 page rejection.
It's just the best one we've [00:08:00] ever got. They were always calling me with. Issues which when I left the office, you could say I was a little jaded and I really thought things were off track in 1600 and and I do know that there's great examiners there. I know that there's a lot of pressure to do the right thing.
And I do know that there was a little bit of selection bias into the petition cases. I worked on, you know, I was working on the things that fell off track. And that's kind of what we want to talk about here. When I popped out, I worked in a law firm as a patent agent, a patent scientist, and I was able to see the office from the other side of the view and also realize things are sometimes off track in the other TCs, the mechanical and the electrical area.
You know, biotech does not have a monopoly on the crazy. There's, there's other stuff. Sometimes that pops up that needs to be fixed. And we had a saying at the patent office when a case falls off track. It's like a great big refrigerator fell off the [00:09:00] conveyor belt and it's really hard to get them back on track and most applications just follow through in that very standard file the case.
You get a first office action. Maybe, maybe, you know, You get an interview a little back and forth, and then maybe you get your notice of allowance. It's kind of straightforward with no surprises, but there are certain forks in the road decision times to make decisions that often involve procedural matters that can crop up and there's pluses and minuses.
Do we go fast track? Do we go through straight examination? Do we take this rejection to the PTAB or do we try to file an RCE or what you'll see in this talk is a little bit of another approach trying to file petitions to correct procedural issues and how that may help move the ball forward. That's what we're trying to offer here today.
But I'd also love to get questions Comments and questions and very much would like to [00:10:00] introduce Michael. He has built petition AI this most amazing database that I've just had so much fun working in and I'll let Michael talk a little bit there about himself. I don't he's he's the expert on that.
[00:10:15] Michael Spector: Hi, uh, I'm Michael Spector and I'm one of the co founders of petition.
ai. Um, we built a comprehensive searchable database of petitions for, just for patent petitions, which was not available prior to our database. And so if you were to go down the path, what Julie will talk about of petitioning, there was no prior to our database. There was no easy way to find. Um, which petition, which applications had a petition and which of those petitions had anything to do with what your topic was or your fact pattern.
And so we built this database that now has 2 million over 2 million documents into it in it to allow. Practitioners to [00:11:00] more easily craft a petition that ideally will get accepted and granted on the first try. And so we're trying to take out the stress and, um, the in toughness of, of, of filing a petition and then also shedding light on the petition and the petition process of sometimes the statistics that the office publishes are not fully accurate.
They can vary dramatically by, um, technology center. Um, and we're just, we write articles and we have this database that we're really trying to make the petition process more transparent and with transparency, good things or things that hopefully will happen that will benefit, um, practitioners and thank, thank God for our company.
That the first time we, we sent out an email to a bunch of practitioners, um, that when we went live and we'd launched a product that what that Julie's now husband was her fiance, um, forwarded to her and said, Oh, can [00:12:00] you imagine that someone built this database? And so Julie has been one of our great, um, advisors since that very first day that we launched.
And so we feel very lucky that we have Julie and her wealth of knowledge and both inside the. The patent office as well as from the other side of working for law firms and seeing The good and the bad and ugly from all sides.
[00:12:22] Kristen: Oh, so to benefit our audience for this, before your solution in your database, you either had to have a mentor or know a few practitioners who had this expertise, who had done this before.
Um, you had to have search skills to get through cases in the U. S. to see and try to find a case that maybe did a petition similar to yours. I would liken that to maybe how you have to respond to a 101 rejection 10 years ago, right? You didn't know. You had to know somebody who knew something. You had to search.
You had to see how things were laying out. So this is a pretty powerful tool.
[00:12:59] Michael Spector: [00:13:00] Yes, we feel the same way. And just to give you some ideas, you know, within law firms, you obviously, many law firms keep, keep their, what they filed the petitions that they filed, um, on, on a server. And so you can, you can go back and look at what those petitions were to see if somebody in your law firm, um, had filed something similar, but even the, the biggest, um, law firm on our database only has 1 percent of the documents that we have.
in our database. So they would not be able to know about the other 99 percent, um, and most smaller mid sized practitioners would have not have any idea about how to do this. So now you can get the benefit of how other people from other law firms have filed these petitions, what they said, and what the office's, the office's response was, both, yes, they got granted, so now you can see what they wrote and what information they included to get granted, But also what, why it was dismissed, which is often very, very valuable because they do have to lay out exactly why they dismissed it.
And so you can say, Oh, they forgot to do [00:14:00] X, Y, and Z. I need to do that if I'm, when I file my petition to get it granted on the first try. And to open up for Julie is she's found some, um, abnormalities, uh, a number of them that, that where there's, there's one TC will, will, um, will decide in the petition one way and then another TC at the exact, within the same month will decide the exact same fact pattern.
totally differently. And you would think that there would be some sort of precedent amongst the TCs in the office of petition. And we've definitely found instances where that's not the case. It often is. Um, but there are definitely some, especially the, the more rare petitions that are filed and that Julie comes across and are much more interesting than the basic petitions that are out there.
[00:14:50] Ashley: Well, we can even see, I think we talked at one of our last, um, podcast around the Patent Prosecution Highway, those petitions, we've seen Those behave [00:15:00] differently, um, even just amongst this group, you know, that we all, you know, because we actually review each other's work and stuff. We submit them in a similar fashion, but then there, you know, we have different.
You know, uh, responses and, you know, they're always very willing to work with us and call us, but maybe, you know. Um, but we've even seen some of that different, you know, people reading things differently or not maybe understanding the bigger, the bigger interpretation of claims and how they function in granting those petitions and things like that.
So, yeah, it is just like any big organization. I think there's. Varying levels of, um, in a different way, things are being handled because it's a bigger organization. So, yeah, it's interesting.
[00:15:46] Julie Burke: When I worked at the patent office, I handled more than 900 petitions, mostly directed to restriction practice. And after final practice, I was the quality assurance specialist that would review those and draft a decision [00:16:00] for the group directors to review and sign.
So I followed that. Um, and as yeah, I'd run across the questions on petitions that I've never seen before. And at that time, and still probably till now, the PTO had no internal database of their own petitions and decisions. So, everybody was kind of making it up as we go along and what really impressed me is there was 1 particular boutique law firm and.
Arlington, Virginia, where they would petition restriction practice and they would attach a similar fact pattern decision they'd gotten in one of their other clients cases saying, this came up three years ago, we argued this, it was granted, here's your, you know, reasons to grant this one for consistency's sake.
And at the time it reminded me of the way, um, some law firms Go to an interview and say, we see this 1 of 3 rejection, but here's a P tab decision where your very art units been reversed on these very same matters. We're putting this in the [00:17:00] record and we can point out the similarities. And so, you know, we think you should withdraw your.
Rejection because, you know, we don't want you to have to go up to the board unnecessarily. Right? There should be some consistency and I kind of view the whole petition process in a way that as examiners become petitioned, they're they're under time constraints. There's a lot of. We're crossing their desk.
They don't want to be overturned on petition. They want their things to go forward. But if they had an idea that, wow, if I restrict this way, I'll probably lose on petition moving upstream. These sorts of things might change examiner behavior, incomplete final rejections, and then they have to reopen those.
And it's a pretty high grant rate when those are petitioned. It's an incentive for the examiner to do the job. Right the 1st time and so that's kind of an idea that eventually maybe we can put petitions out of business or they're only used a little [00:18:00] bit, you know, because it does change practice and policy.
We've been writing papers on the after final petitions, maybe for 4 years now. And when we first started, the average pendency on the patent office side was 180 days, which meant you didn't get a response till six months. And by which point, of course, you had to file a notice of appeal or an RCE. And it, it just left you hanging out.
There was a very tight schedule. Painful area, so we dove in and gosh, maybe 1216 research papers later. We see the patent office really has responded on average after final petitions are resolved within 60 days with a very high grant rate and a high effective grant rate and would also. As I studied the petitioned cases in TC 1600, I check up on them a year later, two years later, just to see what happened to that case that had a restriction requirement petition.
So many times the very next [00:19:00] office action was a notice of allowance. And that's interesting. I found that very interesting going from there to working outside the office. I'd hear time and again, we can't petition the examiner. They'll get mad at us. They'll hold a grudge. We'll never get an allowance.
Let's not quibble over these little procedural things. And actually, we'd like to say, that's exactly what you can do is call to attention small procedural things. The examiner's performance plan is, it's a document created in collaboration between the Popa Union and management, and contains a, um, disclaimer.
The supervisor should review so much examiner work, so many work products throughout the year, and randomly selected work products. You know, they need to look at how the patent examiners are doing, and they have the right. To review any document that crosses their desk for any reason whatsoever. So [00:20:00] when a petition is filed directed to procedural matters in complete final, these newly added claims weren't considered period when the costs and the supervisor and the group director review the merits of the petition.
Time and again, they just put on their examiner cap and review the merits of the rejections also, and ever since when I joined the office and our group director was John Dahl, and he was illustrious for many reasons, but one thing he had is an idea that as a manager at the patent office is if a case crosses your desk for any reason, fix every problem in it.
And we don't want to see that case again. And so you can kind of get a behind the scenes quality review from management by filing a petition over procedural matters. And that's what we see. Still. We just updated our after final statistics and we see 45 percent of the time. The case gets allowed after [00:21:00] petitioning after final.
And that's, that's really important. That's in a significant way to move the needle forward for those cases where you might want to try to do
[00:21:08] David: that. I'm curious. Do you see particular examiners, um, are the ones that are triggering petitions within a TC um, you know, building on sort of what Chris just said?
Earlier discussion. There's a lot of variability and it's a big organization. So of course you expect that to some degree. And we look at all the examiner statistics and you. You can, you can pretty easily tell these days about what type of an examiner you have on a particular office action or case and like, I'm just curious if in the database or if in your experience you've seen, um, sort of difficult, I guess, examiners, uh, coming up again and again, uh, triggering, triggering these types of
[00:21:59] Julie Burke: petitions.
[00:22:00] Um, there definitely are characteristics, um, outliers. examiners with different behaviors. There are, would be examiners under pressure, or who were trained up, or who are in an art unit with a culture of, um, restricting, slicing it thin as salami, restricting to the very nth degree. That was another John Dollism that we inherited, slice those claims thin as salami and hold on to that.
There are examiners who have a difficulty changing a position, changing horses midstream. Once they seize a plan of attack, just like human beings, like all of us, you know, they're quite sure they're right and absolutely embarrassing. Possible to, um, change. Um, I do believe in that, uh, 10 percent of the people cause 90 percent of the work when you're in some sort of oversight.
Position and, uh, it's, well, we've seen the patent bot stats examiner analytics. We're in the same art unit, the same [00:23:00] technology. You've got an examiner with a 7 percent allowance rate and 1 with an 80 percent allowance rate and as a quality assurance. Specialist, I can't help but look at that art unit thinking, wow, either somebody's rejecting things that need to be allowed or at the other end of the spectrum.
Somebody's allowing things that are not ready for allowance. You just really don't know. But to get back to your question, David, I remember I got a. Phone call I get phone calls as sitting as a class and they call up to say, just advise me what should be my next step. I mean, I'm really having a hard time.
Should I reach out to the speed? I mean, what do you think? And, you know, I'd say, maybe you could consider a petition or, you know, I, I just, we didn't give. Legal advice, but we made available options just to kind of move things forward. And also we would be available to sit in on interviews for certain procedural things.
I get the phone call and I'd have the, the attorney explaining what was in the last office section and the things that were done. And I'd say, is it [00:24:00] our unit? So and so. Is it examiner so and so because, you know, their fingerprint there, it is exactly what certain people's do. And I remember going to management saying this examiner, you know, is clearly an outlier.
This is the 17th. Request for drawing sequence listings, notice of non responsive amendment in one application. I mean, anything that comes in, it gets punted right back. And I said, you know, this primary examiner needs some oversight. And I remember the group director telling me, Julie, he's got 120 cases on his docket.
And if we start doing oversight on this one, we'll have to do oversight on all of them. We don't have time to do that. We can't possibly. There is a. Great deal of deference given to the primary examiners and the way they do things. And you all might see that too.
[00:24:53] Kristen: Yeah, I have a question about your 45 percent allowance rate kind of after after after [00:25:00] final petitions.
Is there one type of after final petition that you saw that kind of lent itself to the most allowances like that would lead us to say you always need to file an after final petition in this scenario?
[00:25:14] Ashley: Maybe that's a good segue to maybe go into the presentation a little bit to kind of start talking about some of the.
Types of petitions and things like that and the after final
[00:25:23] Julie Burke: charts to that effect. Yeah, that's great. I'll wait. Perfect. We just had a couple intro slides. It's it's this idea that every application is different, but they're all shoehorned into the idea of one size fits all. It's the same filing fee. And whether you're, you know, claiming something like a simple mechanical invention or a vaccine, the differential in hours is really not enough to compensate for the complexity of some of the complex inventions.
So we're over here looking at, uh, [00:26:00] I mean, some of these complex inventions probably deserve 10 times the amount of hour for examination as for a simple mechanical invention. We've got the examiner performance plan. They're unionized. It drives everything that they do. They work towards their performance plan, and they've got production, pendency, docket management, stakeholder responsiveness, and quality as goals to be met.
Um, they try their best to examine the case. In the time allowed it and to the constraints of their performance plan, but note, they get cash bonuses for production, pendency and docket management goals. There's no bonuses for quality and it's the idea that when you're working on something as complicated as a.
patent application. I mean, mind you, there's what, four, four different statutes, subparts to the statutes. There's 20 claims, 30 claims, there's prior art, there's filing dates, it could be a case that has [00:27:00] a series of continuations. Things can get really complicated and it's easy for mistakes to happen.
Inventors, patent attorneys, agents, you know, we can make mistakes. Patent examiners can make mistakes, the clerks at the office can misfile papers and cause procedural problems to occur, and the USPTO's IT system with DocX, we're seeing that mistakes can crop up that way, so they just can't do fast, cheap, and high quality altogether.
Something's got to give.
[00:27:32] Marie: The
[00:27:33] Julie Burke: way to correct procedural errors is petitioning, and you can variety of petition types. We kind of break it down into three types. One is to ask for additional things like, for example, a, a, Expedited review. Um, another type of petition is to correct an error, perhaps made by counsel or prior counsel.
Abandon a case and revive a case that went abandoned [00:28:00] and then much of what we're looking at is correcting procedural errors that could be made by the examiner. And time and again, as a class and then outside of the patent office, I've heard, you know, this will never work. Petitioning examiner errors and certainly back in the day when it was 180 day turnaround on your after final petition.
It really wasn't working. It was quite broken, but I'd like folks to leave this talk with the idea that things have improved options are available and, and, Things can work. What do we have over here? After final. This is a real pain point. This is a time where you've got to make a decision. File that notice of appeal.
File the RCE. What can we do here? And, and to get back to, I believe was Kristen's question. We'll talk about after final petitions that really have a chance of moving things forward. So, first off, that After Final Toolbox is really important, [00:29:00] and if you can work with and use different aspects of this, even if, for example, your AFCP 2.
0 request is turned down, all this does is creates a really good paper trail for the examiner, the supervisor, even the PTAB judges that you are trying every avenue possible to advance your applicant's application. Patent rights and it creates a really good impression for filing a petition. If there's been other bonafide attempts to fix the problem, we're happy to announce the PTO's latest stats for deciding after final petitions.
That's 62 days with a median average of 41 days, quite an improvement from the 180 day average we'd seen. And the patent office has a 47 percent grant rate, Um, this is a grant or deny, dismiss, grant or dismiss. So this is the straight up grant rate. We'll talk, we'll get back to [00:30:00] that number in a little bit, but what we'd like to propose is petitioning procedural errors.
It's an unlikely road to allowance. Petition or appeal. One thing to keep in mind that appealable matters go to the merits of the rejections, the 102, 103, 112 rejections, while petitionable matters are objections and those would be decided in the TC by the TC group director. This is what I kind of spoke to before.
Filing that petition gives the management in the TC the opportunity and obligation to review the file wrapper and by filing petitions to address procedural issues, this is a way to try to leverage procedural issues into some substantive progress on the prosecution. And examples of petitionable examiner errors, incomplete, incorrect office actions, premature, final, new grounds of [00:31:00] rejection, refusal to enter amendments, declarations, affidavits, not addressing, acknowledging and addressing the substance of applicants response, and then an improper restriction requirement might mean that the final rejections incorrect if more claims should have been examined.
We found, uh, we just did a survey, Michael and I, last week. We looked at 98 petitions challenging finality. This is hot off the press. You're the first to see it in the last year, April 2023 to April 2024. And while we found similar pendencies and grant rates, As in straight up percent granted percent dismissed 63 days to get your decision and a 47 or 49 percent straight up grant rate.
The effective grant rate we found was actually 71 percent and 43 percent of those applications have since been allowed. So, clearly, we believe filing a petition after final does [00:32:00] not jinx your, your examiner into rejecting your case.
[00:32:04] Ashley: Julie, I can't remember if you're going to go into this or not. Do you have a couple of examples of, um, what you.
What the office would consider or what you've seen as examples of, like, an incomplete or incorrect office action or premature final rejection, you know, to kind of help, um, aid in some of the conversation around these, like, what's some examples of, of, you know, like, when, if I'm looking at a client's case, when, when should my brain trigger to think about petitioning based on some kind of incomplete or incorrect office action or premature final rejection?
You know, something like that. Like, what's, do you have any examples?
[00:32:42] Julie Burke: Absolutely, we've got examples. An office action has, um, two parts to it, the cover sheet and the body of the office action. And the cover sheet is going to say which claims are pending, which claims are rejected, which ones are allowed or objected to.
And that claim listing [00:33:00] then should match The body of the office action where if you go through, you end up with the same claims being rejected under one of the various statutes or claim being allowed or objected to the office action body where it will have the claims one to ten are rejected under one oh three over these references.
For example, right? Um, it's really important to and you really also have claim 11, which is talked about in the body of that rejection, but not listed as rejected and not in the rejection statement and not listed as rejected on the. front page there. When the claims are not accounted for, on one hand, you could say, presumably this rejection also applies to claim 11.
And you can do that. You could call the examiner up and say, I, I got this incomplete office action. You haven't addressed claim 11 on the merits. Is it rejected or allowed or what? And you can work with the examiner and resolve [00:34:00] that by an interview summary that would make the record clear. Or the examiner could send out a supplemental final action saying, We meant to include claim 11 in that rejection and well now here we have, but it also could be a reason to petition.
You've got a claim with an incorrect status
[00:34:17] Marie: and
[00:34:17] Julie Burke: you don't know what it's rejected under or if it is rejected. Has the examiner considered it? There's, um, times when there's been amendments filed and texts of claims have been changed, but when you read the rejection, you can see that the examiner is clearly looking at the unamended claim.
Um, premature final rejection. We get a new rejection and it's not based on amendment. Examiners can plop a new rejection into a case. Um, new grounds of rejection in a final office section. And it's not. Indicated as such and not talked about the down towards the bottom failure to acknowledge and address the substance [00:35:00] of applicants response.
You will see that where you've made 5 arguments why your claims are novel and unobvious and the examiner only addresses the 1st 3. You might have filed a declaration and the examiner doesn't discuss the declaration. Any one of these things where not all the prosecution loose ends are wrapped up are reasons why you may have an incorrect, incomplete final office action.
And each one might seem kind of minor. Time and again, if they're cutting the corners, if the case were to end up in front of the board, right? You haven't had a chance to have that, your arguments considered on their merits. Those would be examples of an incomplete, incorrect office action. I have seen finality withdrawn over a double patenting rejection.
Claims were rejected for double patenting [00:36:00] and there's a typo in the patent number. And the attorney could kind of figure out which case might have meant But didn't and instead petitioned and that record is not clear and complete and applicant shouldn't have to guess what the rejection was and so for these reasons, this can happen.
We've also seen incomplete final rejections where the examiner's citing prior art, but it's not listed on an 892 form. It's not prior art on the IDS. It's cited in the body of the office action. Sure, applicant can track it down, find it, get copies of it, and submit it on an IDS, or respond and say, I guess you mean this region, this piece of prior art, but it's not a clear and complete record.
So those are some ideas, and I think in the next slide I've got, uh, yes, the MPEP guidance behind all of this. These are sections of the MPEP that you can point to. [00:37:00] Um, MPEP 71006. Is another option besides petitioning that you can. When you receive an office action that contains an error that affects your ability to reply, you don't know what reference is cited.
You don't know if claim 11 is rejected or not. You don't know if the examiner's considered the declaration, whatever it is, in theory, you can file a request to the examiner or to call the supervisor and say, For 7 10 06, I want a new office action with a new start time. Um, this is something you can try and it can work, but also this sort of language could go into a petition saying, you know, you should send me a new office action.
There's, you know, I can't respond to this one. It would be a waste of applicants time to try to guess what was meant. Does that kind of help with that? Like, what it could be?
[00:37:56] Ashley: Yeah. So, does that almost, yeah, I had this question earlier, but I think it's [00:38:00] more apt now. Does, have you seen any statistics then, you know, because you kind of are couching, petitioning is kind of completing the record and making it more clear, you know, um, does that Does petitioning favorably or unfavorably or like, you know, nothing impact appeal review or even like future cases?
You know, do you know if that having a petition in the file history does that wait like review by a court or by the PTAB or otherwise? In a favorably, unfavorably
[00:38:37] Julie Burke: way, so to get to the P tab, if a notice of appeal is filed and then a appeal brief is filed, there's a review involving the supervisor involving often a class, a quality assurance specialist and an appeal conference occurs.
Sometimes there's a pre appeal conference. If you do the AFC, you do the pre appeal conference route [00:39:00] and the examiner's answers signed by three primaries. And if those three primaries are opening up the case and seeing that it's messy. And then also seeing, you know, applicants got some good points here.
They really weren't sure the gist of the rejections were the exact prior art being cited, or they weren't sure exactly what priority date was being given to those claims. Issues like that that are procedural, they're going to be looking at this understanding that, you know, maybe this case needs to be To be reopened.
Maybe we shouldn't send this up to the board. Maybe it's not right for appeal right now. And just as I was able to recognize certain examiners that are working fast and cutting corners and not giving applicant a fair shake, the other managers in the T. C. also are very aware of this. And we'll see this.
This applicant tried everything. They tried to interview. They tried to call the staff. [00:40:00] They sent in a request for a new complete office action. They've filed declarations. They've, you know, done, they've gone through every step. This must be an important case for applicants. It's really, they're really working this hard and we should meet them halfway.
[00:40:16] Ashley: No, it's helpful. So you don't, you don't have any data though. Even just, like, you know, after grant, so maybe more of the P tab in, like, a post grant proceeding or a district court. Is there any give any data around if cases that were petitioned or have petition history in them, whether they fare better or worse or equally.
In like later challenges, do you have, I don't know, I'm just kind of curious if there's any data set in.
[00:40:46] Julie Burke: Great question, Ashley. It's like two paths. One is directed to the procedure matters and then one is directed to the merits of the rejection. That's what the PTAB is focusing on. To get there, they have to go through management in the [00:41:00] technology centers to have three supervisors agree, three, three Primary examiners, one of which could be the SPIE and the examiner assigned, agree that this is right for appeal.
One suggestion though I do have, I was quite surprised to see, um, the PTAB does, um, honor requests for expedited examination, and they will pull applications. I have seen PPH applications or applications that have been made special in view of age or health, For expedited review, and if you have a case that's going through the patent office examination process for expedited review, I have seen, um, appeal briefs filed where one of the 1st lines is we want to point out to the board that this case is under expedited review because of and we'd request that the PTAB continue to work on this case quickly and that's a real advantage.
I believe sometimes with the PTAB delays. To be able to [00:42:00] get that nudge there.
[00:42:01] Ashley: Yeah.
[00:42:02] Julie Burke: Yes. But no, I don't know of any, um, I don't know, uh, restriction requirement issues ending up in court or after final having any, uh, After final petitions, having any, any merit at all by the APJs. They're looking really at the merits of the rejection.
[00:42:21] Ashley: No, for sure. It's less about the, them looking at it, but more is, um, is having, you know, you know, kind of, you know, Petition practice, in theory, results in, might result in a cleaner file history. And because it's a cleaner file history, maybe there were better arguments, better, maybe better considered arguments, maybe better back and forth, whatever.
Because of that, because of that forced cleaning up of things, it then results in a better review for the, for the case on the merits in a court case. And a post grant proceeding, you know, I mean, it's more of like a [00:43:00] litmus test of how things might go because it is a cleaner file history. So I was more curious about that or or is it a red flag or something somehow to later review?
You know, that was more my curiosity. If there's any correlation between having petitioned and maybe having a better outcome because. Things are cleaned up better better arguments were considered exchanged and things like that.
[00:43:24] Julie Burke: Yes, I can't really speak to what the courts are doing or the PTAB. We haven't followed downstream anywhere that we've just looked mostly towards the outcome.
I think patent practitioners would favor, which is taking a case which is being poorly examined and having it cleaned up and allowed. Yeah.
[00:43:46] Kristen: So, Ashley, one of the things I've been doing this almost 20 years and one of the things that I try to do with every single case, and especially if I am going to petition a case is I will talk to the examiner ad [00:44:00] nauseum.
They will have me in their cell phone, right? They will know who I am when I call because I'm like, hey, you This is what I'm going to do. This is why. And this is what I'm thinking. What do you think? Call me back, whatever, you know, and I do that because I do not want to ever have an examiner be stocked that, you know, I'm going, this is not this finalities improper.
And I never spoke about it in my interview. Right? Or I never brought anything to their attention. I want them to know it's coming. I want them to be prepared to respond, which is why I will tell them earlier. Right? Right. And. I want them to know I'm watching, right? I, I do not just willy nilly file petitions, uh, to, to throw it back in their court, right?
I want them to know I also want this to move to allowance. I do not want to make your life terrible, right? Like this is procedure for a reason and let's, let's talk, let's chat. So as much communication as you can do, especially if you're going to like any of these [00:45:00] noted here, um, Just call just call always willing to talk to you.
Yeah, I think you had to
[00:45:09] Ashley: add on to that before Julie.
[00:45:14] Marie: Yeah, same thing. Same experience. Talk to the examiner. Sometimes it's minor errors. If they clarify it over the phone, then we can move on. If they're willing to do a supplemental action, then we can move on because I've had that happen where the examiner will do that.
I'm good with that if they're responsive, but we all know there have been situations where they're not responsive. It can become confrontational. So then you kind of know where you stand. To me, that's why there's all these processes, appeals and petitions. If you just can't, you know, sit across the virtual table and figure things out.
So I'm with Kristen on that one. I try. So if I do any of this stuff, it's because I'm just [00:46:00] done. It's like, um, the examiner's not budging. I truly believe something isn't right. And then you, you know, take other action. So sometimes successful and sometimes not, right, but it's what you have, what you can do.
It's what your resources are. Yeah.
[00:46:20] Julie Burke: That's a very effective way to deal with the patent office. It's a great approach and it's important when you're talking to the assigned examiner to know whether or not they're a primary examiner. And if their work is being signed by a primary, they, they don't really have the authority to allow your case or even to make a final rejection.
And it's. Fair at that point to get the primary examiner, who may be the supervisor, or may just be another examiner in the art unit, also on board with the conversations. And when we see Numbers of petitions. I am well aware that [00:47:00]there's a much, much larger number, which is procedural errors that have cropped up and have been resolved exactly with the approach.
You all are taking call the examiner pointed out to them with the quality review that goes on inside the office. There are examiners that would be totally grateful for you to point out a procedural error so they could fix it before it ever gets caught and flagged by quality review. They don't want to be doing sloppy work.
Absolutely not. So there is that esprit de corps and that appreciation. If you call and just say, I know this is probably what you meant, but you know, we just need the record clear.
[00:47:39] David: Yeah, Julie, I'm wondering if you have any advice for us on timing, um, because I, I absolutely agree like with exact what Kristen Marie were saying, whenever we see something that is we think is improper.
The first. Line of attack or our first response is to, yeah, contact [00:48:00] the examiner. A lot of times I'll call. So like the ombud office or quality people just to like, make sure we're thinking about it correctly. Can they point me to any, uh, maybe passage in the MPEP that is, could be helpful and we'll call the examiner and try to work it out, but of course at that time, time has gone by and we're.
Sometimes in the situation where we're feeling like, well, we could petition this, but it's, we're unlikely to get a response or a a, a ruling either way before we need to file a a a a, an office action response or something else. Um, so do you have any advice for us on how to deal with that? How to follow the right sign of, of, of, of, of, of, um, responses from our side, if we see something is improper, like calling the examiner, but then how do we get the petition in front of someone in time?
[00:48:53] Julie Burke: Those are great questions. I'm going to jump ahead on the slide deck. We have a little visual there points [00:49:00] exactly to what you might be wanting to do when you've got a procedural problem and you can do these approaches and you can try several options and I would field calls from attorneys who didn't want to give me the examiner name or even the serial number and would just say, Say, I mean, if you had a hypothetical situation, do you think that's petitionable?
Or, you know, what should I do? And I'd be pointing them to these different options that occur. You're right. Each step of the way takes a little bit of time. This is the USPTO processing time by various states. Papers that could be filed. How long it might take, and the MPEP site just to let you know that you can be filing an AFCP 2.
0 request. Or you could be asking for a examiner interview. By doing this, you're creating the paper trail in the file saying, you know, we've tried A, B, C, and D, and well, now here's finally the petition. For sure, a petition under [00:50:00] 181 needs to be filed within two months of the final rejection, if that's the subject of the petition, a premature final rejection.
The petition must be filed within two months of that date. And right now, the office is turning those around in about 60 days. Um, which would get you a decision at the four month date, and so there may be extension of time fees required, but hopefully you don't bump up to that six month date where you've got to decide whether to file the RCE or the notice of appeal.
Um, one. Thing also is that the quality assurance specialists, the supervisors, the people that draft petition decisions, they're also under a time constraint. Um, I don't have that one on here. Let's see. It says no clock set, but at least it used to be in the performance plans, 45 days for the classes to pick up and [00:51:00] work on drafting that petition decision.
And when you file the petition, it is perfectly fine to give. the QASA net TC or any QASA net TC, a heads up to say, you know, we filed this petition. It's after final. The clock is ticking. You know, we filed it three days ago. We're just confirming it got to the deciding official. And things like that can really help queue it up so you get a quicker turnaround time.
Those are all possibilities because, yes, time is of the essence here. There was an amendment to the MPP chapter 1000 about how the office can waive the 2 month response filing time for a 181 petition. And it explains if there's a record showing, you know, good faith interaction with the patent office with the primary examiner trying to resolve the issue and it spilled over longer [00:52:00] than two months, the group directors can still think of that petition as timely.
So that was another softening up on the restriction on the petition constraints that might be helpful for you.
[00:52:12] Ashley: Super helpful. Thank you.
[00:52:14] Michael Spector: And just if I can add in one thing, one of our early papers, um, this is just like, it's just a tidbit of just like a life hack or when you're filing a petition for lack of better word, but make sure that within a couple of days of you filing petition that is actually in the system.
What we found is often, not often, but we've definitely found numerous cases where it didn't get into the system until months after it was supposed to, that you filed it, and then it still gets decided within, let's say, the 60 days. But if it's not in the system, then it could be months out before you actually get a decision on your, um, on the petition itself.
[00:52:55] Ashley: How does that happen? Is that just like, we've seen that for Some other [00:53:00] things where it just, it takes longer, so we end up calling and it's like, you know, somebody's tracking it down and then they end up figuring out, you know, sometimes it's like you filed a response to something on the same day it came in, which we're learning to never do, like, make sure there's at least a day, but, you know, there's these things, and it's like, you put it in and it goes into the black hole and you're like, like, where did it go?
So, um, is that just, you know, somebody kind of working on the back end and it just isn't being. Like, what's happening there? Or do you know, like, where does it go when it doesn't show up?
[00:53:35] Julie Burke: Right. When David Kappos was the director, he had an 18 month process on from the very first time an application is filed to the application issues.
Every step of the way, kind of like a re engineering the patent process. in depth detail as to who's touching which papers and how are they entered and how does this whole work. And I was the [00:54:00] Quality Assurance Specialist representing the Patent Corps on that 18 month project, and we looked to see how petitions were, um, filed.
When they're filed, who picks them up, how are they handled, how are they logged in, and there's just a bunch of Lacking particular index codes, passing through too many hands, being put in front of a clerk or a contract employee who can't tell one type of petition from another. And there just really wasn't a huge incentive to fix the petition process.
We saw that time and again, it was like, they didn't really want a robust, reliable, transparent, accountable petition process. This is petitions are just considered a, you know, an aberrant once off sort of. Thing each TC would handle petitions their own way and it poorly managed. Can I say that was about in 2010.
We believe they've made great strides since then, and trying to aim for some [00:55:00] consistency between how each TC handles petitions are our problem with the petition database or. The advantage there is that there's gosh, at least 45 different kinds of petitions that are handled by maybe 8 or 10 different parts of the office and getting that petition in in front of the right person is just really hard to do and then once it gets in there, everybody's got other jobs to do.
And if there is no definite clock set for when a petition decision needs to go out. Right. They've got a lot of other things to work on until then. And so that's how you can see these petitions languishing for 66 months, you know, without anybody picking it up the examiners if they pick up a case and notice the petition.
It was always good practice for them to bring the petition to the deciding official. They're not supposed to mail any action out or take any movement on a case [00:56:00] until the petition is decided on the merits. But maybe that examiner doesn't want your petition decided right away. It's not their priority. So these are all things that can definitely slow up how petitions are handled and it it gives the perception outside the office that you know, it'll never work.
Petitions don't work. The last thing I want to do is file a petition. You know, it kind of reinforces that mindset there.
[00:56:26] Kristen: But if you call that examiner, Twice a week for the next month, I
[00:56:33] Julie Burke: guarantee something will move.
Absolutely, that is a great way going forward that will that will solve a lot of problems and they really do need to examine a certain number of their cases correctly within the procedures and it might as well be yours, right? Yep, this is the statistics that talk about a 47 percent [00:57:00] grant rate, but there's something called dismissed and dismissed can be towards the merits of the case or dismissed could be, um, actually a good response.
Dismissed as moved. And so we've seen petitions dismissed where you open up the file and golly, you've got a notice of allowance already, or the examiner already withdrew finality or sent out a new office action. So, 47 percent dismiss doesn't account for the idea that often that dismissed is actually a grant a grant.
thing. Um, the bad dismissed as moot is when they delay so long you end up filing the RCE. And then they say you filed the RCE, you know, too bad you're dismissed. Over here we looked at, um, this is a 98 percent of the petitions that we looked at. The volume varies from TC 20 and TC 3600 in the last year pertaining to after final practice.[00:58:00]
I noticed TC 1700 had none. None, and it could be they have talked to their examiners and said, you know, we don't want to make premature final office actions. It's possible that that's a reason why they don't even get petition. The pendency we found was on average from 23 day average pendency to 125 days and the grant rate.
The actual grant rate was from 35 percent to 76%. So the electrical TC's 24 and 2600. Seem to be treating such petitions favorably and then the effective grant rate. Um, this is where It shows up as dismissed, but it's because the examiner's already run ahead and fixed the problem There's a 94 percent grant rate in tc 2800.
That's kind of good to know Um the percent of applications since allowed up to 60 percent of tc 3600 applications were allowed after a petition You Looking at [00:59:00] after final practice, and then we got a couple charts here, and this shows the number of decisions in each TC. And again, we don't have TC 1700 here because they don't have any, but we could have put a 0 there.
And then this shows the grant rate, and then the effective grant rate. So we feel like this is a viable option when you're up against the wall and all the other steps have not worked. You've got one more thing to do before simply filing that RCE or. Trying to go up to the board and then this is the allowance rate that we found.
It was like a 43 percent allowance rate across all the petitions, but in some TCs it's already a 60 percent allowance rate and TC 3600 has some tough subject matter and to know that this might be a way to edge it up and and have a chance of getting something allowed that might be a viable option. Um, finally, I've got a slide here.
I think maybe Michael would like to speak too.
[00:59:59] Michael Spector: [01:00:00] Um, just very quickly about our our database in our tool is as I mentioned that we're petition. ai is a comprehensive searchable database of it's all publicly available patent petition documents filed with the USPTO. We currently have over 2 million documents from 700, 000 applications that have been filed since the early 2000s.
The documents include. Petitions request for reconsiderations and petition decisions. When you search on our database, it just using natural languages like searching on Google, um, we launched it a couple of years ago and really people use our database to save time, save money, reduce their stress when they file a petition and reduce the uncertainty.
Um, with, with filing a petition, you have, you have a pretty good idea about when you should be getting a response, especially if you do research of like, like similar, similar situations that you feel pretty confident that if you use similar [01:01:00] language in the same similar arguments, if you can, that they should be decided in your favor, especially on the, on the first attempt.
Um, and that's, that's really, I want to open up to questions that you guys may have.
[01:01:13] Ashley: Yeah, does anybody else have any questions for Julie or Mike? Um, yes, it's been really interesting. You know, I think, I know this group has used probably a lot of the petition to make special, you know, different pathways.
And, and, you know, we've all used the petition to revive at some point or another. Um, but I think this after final petitioning, I think it's really interesting. I think having access to. How to go about it, because this probably is a less, you know, it's a less frequently used pathway. I think that's really interesting.
[01:01:43] Kristen: Yeah, no, I just want to thank you. I don't have any further questions, but I have a content idea for you for your site or LinkedIn anywhere. Um, like when should I always file a petition and then just list, right? Like the five top things or whatever you think, you know, [01:02:00] that would help a practitioner. Oh, I'm in this scenario, right?
[01:02:04] Ashley: Yeah. Cause I think to like Marie and your point, Kristen, I think it's easy for. Yeah, and to your point too, Julie, you kind of said it's easier for practitioners to kind of always just, like, kind of not brush it off, but say, well, I'm just going to call and bug the examiner and I'm just going to, like, I'm going to try to, like, just push this through and talk with them and, you know, but is there, is there, like, these are the top most common reasons you'd petition because, like, we've seen the data's there, right, that, like, 9 times out of 10, you end up petitioning for this anyway, so you should just petition right away instead of trying to, you know, Constantly call the examiner or do some other path.
Like, this is like one of those just just petition it because you're going to end up there. Anyways, or it's like, it's very probable. Yeah,
[01:02:51] Kristen: like, you're always going to do that. If you're in a situation where you're making an amendment and narrowing. At least one claim, right? And just kind of lay that out.
Um, [01:03:00] I, I just think so many people do not go back to the MPEP and read. They just don't want to do it. And like, I'm a nerd. I'm an MPEP nerd. So I'm like, why would you not look this up, right? But so many people do not want to do it.
[01:03:14] Julie Burke: I totally understand. I can leave you with one tidbit as to when you would like to petition.
We're working on a third article. It's when your application has been improperly abandoned by the office. Either your office action went to a wrong address. You know, USPTO error or you file a response and they don't process it. It's sitting right there. You paid the issue fee. You've got documentation and yet your case is abandoned when this comes up and you look on the MPP, the in the MPP and in the petitions page.
There's. A real push to file that e petition to revive, even when it's office error. And we've been tracking cases and they're trying to put together a [01:04:00] story along the lines of, then you petition for a refund of that money. That was patent office error. Your case actually wasn't abandoned. You want the money back.
They're very, very good at keeping money. Anything that has to do with money must be handled by petition because the examiner can't make a decision on that. And the suggestion I'd leave is that if your case is improperly abandoned by the office, the examiner can't revive it, the supervisor can't revive it, but file a 181 petition.
It has no fee. Office error, revive my case. And we've got examples where those have been granted. And so you have not, you didn't, you've saved your applicant from unnecessarily paying the revival fee. That's one area that we could look at. I love how you all are talking with the patent office, working your approach, and anybody that delves into the MPEP.
There's all sorts of nuggets and gems there. And, uh, we've really had a [01:05:00] pleasure speaking with you today and available if there's any other questions or, uh,
[01:05:06] Michael Spector: Marie, I don't know if you're, I think you might have a question.
[01:05:09] Julie Burke: Yeah.
[01:05:10] Ashley: Marie has a question.
[01:05:11] Marie: Yeah. I don't want to everybody, but I have a really sore point for an error, though.
I think yes, case of an error on a case that I had where the case became, um, in my opinion, improperly abandoned. Yeah. And, um, I, I did everything I call Anybody and everybody in the office, I petitioned because it was wrong. I petitioned, did the petition to revive. I petitioned to get my money back. Yep. And it was a clerical issue caused by the examiner.
Yep. Bo, bottom line that the examiner actually wouldn't even. He wouldn't even admit to it. And I had to go to the supervisor of his supervisor to get him [01:06:00] to put something on the record where he admitted that he had made the mistake. And still, even with that, I still had to pay the cost to revive, still had to do the petition.
It took eight months and I never got my money back. Sorry. A little sore point with me. That really bugged me.
[01:06:16] Julie Burke: That's what we're looking at. We're looking in these last series of articles when the patent office is taking money and refusing to refund money and those stories are so painful and it's the tiniest of mistakes can be made by applicant or the doc x errors that create extra claims you never had and then charged you for excess money.
fees and they're not giving the money back. Those are, it does really strike to the heart of the idea that the patent office should not be charging even a penny more than what's due to you and I'm really sorry that agency did that.
[01:06:52] Marie: And I actually got from someone in the office, it was at the holidays, I was told that it was going to be resolved, that I had to wait till after Christmas.[01:07:00]
Yeah. And a month later, after harassing them again, I got to this individual and they said, sorry, I couldn't do anything about it. The case has got to, it's going to have to go abandoned.
[01:07:10] Julie Burke: Oh, this is, and so, and then we've, so we have examples and I think our second paper where an applicant petitioned three times and on the third time it landed in front of the right person who gave back money, but the same situation sitting there and they're not giving back money.
So it's those, that sort of inconsistency. We were hoping by shining a light on. The way they're handling refunds that they might clean up that shop, too.
[01:07:35] Ashley: It's a
[01:07:35] Marie: goal of mine. Sorry, it's been a sore
[01:07:37] Julie Burke: point.
[01:07:38] Ashley: Yes. Yeah. Awesome. This has been super interesting. Yeah, we appreciate it.
[01:07:43] David: Yeah, thanks, Julie. Thanks, Mike.
That was really interesting. I agree that, uh, some things to look into here.
[01:07:50] Ashley: Yeah, I feel like we need to do, like, an NPEPK study now of, like, like how churches, like, we're going to, like, re revisit all the Bible, all the books [01:08:00] of Revisit all the sections of the MPEP. Let's, for a series, let's put our audience to sleep.
And for 2025, we're going to do one section of the MPEP every month. No, I'm kidding. Um, no, perfect. Awesome.
[01:08:16] Michael Spector: Thank you. Thank you. Thank you. Thank you for allowing us to talk today. It's been great.
[01:08:21] Ashley: Absolutely. Thank
[01:08:23] Marie: you. Pleasure.
[01:08:24] Josh: Bye.
[01:08:24] Marie: Thank
[01:08:25] Ashley: you. Take care, everybody.
[01:08:25] Marie: Bye bye.
[01:08:27] Josh: All right, that's all for today folks.
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