Procedurally-Complex Appeals

While prosecution rules are designed to standardize practice and simplify procedure, unusual or complex situations do arise.   If they do, perhaps you can give us a try.  A leader in professional recruiting for pharmaceutical Research & Development did, and here is what happened:

Diedre Moire Corporation found it challenging to identify scientists with the unique, specialized scientific experience required by its various mandates.  In response, the company developed a ground-breaking way to not only find scientists with the appropriate specialized skills, but to also inexpensively contact those scientists to tell them about new employment opportunities.

Seeing the broader competitive value of its new technology, the company applied to patent it.  The patent Examiner, however, perhaps confused about whether the invention was properly classified as an data-mining algorithm or a marketing method, a business method patent or a software patent, refused to even examine the application.

Without examination, however, the applicant could get no patent.  Further, the Examiner’s refusal to examine appeared entirely outside agency control: the Director did not intervene, and The Patent Trial & Appeal Board could not intervene because it has no jurisdiction  for such managerial (rather than substantive) problems.

We were brought in to help.  To clear up the log jam, we used an old, but rarely-used, solution: we asked a Federal Court for a writ of mandamus compelling the Examiner to examine the application.  The approach proved uniquely effective: the Patent Office reassigned the case to a more-experienced Examiner, who agreed to allow the case.  Of the resulting patent (US6381592), the C.E.O. of Diedre Moire says, “As a result of the patent awarded, I’ve been able to protect our exclusive use of a technology that has kept us in business during a recession that has wiped out nearly 50% of our competitors.”

Isn’t that what you want your own patents to do for you?  If so, Contact Us.