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By J.D. Houvener
Patent Attorney and Founder

Everyone, I’m J.D. Houvener, your host of the Bold Today Show, where you, the inventor or entrepreneur, get your daily inspiration to make the world a better place. Hey, we’re in our big series about how to get a patent on your invention, what are all the steps needed to make that happen? We’re talking about step 11, or almost there at the end. We just yesterday talked about the office action experience, where you’re working back and forth with the examiner, going through a non-final or a final rejection, and how to work with your attorney here at Bold Patents to make the right decision on how aggressive to be in that response, whether it be legal argument or through amending your claims.

Today, I’m talking about taking it to the next level, and what that means is that sometimes we just can’t get on the same page with the examiner. And when that happens, we need to make the decision to petition to the director or appeal to the Patent Trial Appeal Board to get the claims granted. When this happens, there is a big decision that needs to happen, right? This is almost like a mini litigation within the Patent Office. We’ve come to terms best we could with the examiner, but they just, for whatever reason, don’t see our arguments, don’t understand where we’re coming from, and we need to get this in the hands of someone else.

So, filing a petition or an appeal, we do that. We help our inventor and advocate to the best ability to get their patent granted. Sometimes it is the case that examiners have certain backgrounds, and they’ve looked at so much documentation in the specific areas of technology that they’re sort of mired in this and they’re not able to see the novel aspects, the little discrete parts of the invention, and how it’s different from what they’ve seen before. There could also be personality conflicts, and we’re human, right? And so there could be an issue between the inventor and the examiner or even the attorney and examiner, something that’s happening that’s other than the substantive issues.

We need to get this handled by some sort of managerial level, and that’s where we go to the director. Following the process of appealing does take quite a bit more work. There’s an appeal brief that’s filed, there’s an aspect that the board will make a determination on whether there’s enough merits to even get an appeal, and that’s where this is, for this brief scenario, it’s like filing a mini court case. It’s the inventor and their attorney suing the examiner, and in some cases, an examiner almost wants this in a weird way. They kind of want their day in court too. They want to be heard and make sure that if they think they’re following the rules, they need someone with higher authority to tell them, “No, you’re not doing it right. Please do A, B, and C.”

So, an appeal can actually be quite relieving to an examiner. It takes the issue away from them. It’s always good to keep an open mind and be optimistic in these tort situations, and having some experience doing that, as we do here at Bold Patents, will really guide you through, knowing that we have a good idea of what the outcome is going to be and can help you think about what the steps are in between. So if you have any questions about the patent prosecution petitions or appeals, please get with one of our patent attorneys. You can visit our website at boldIP.com or give us a call.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/