USPTO Examination Practice
Analysis of examination procedures, examiner reasoning, Office Action practice, and the prosecution context in which examination decisions were made.
Patent Services
Expert Witness Services
Expert analysis concerning USPTO examination and patent-prosecution practice, informed by more than 42 years of experience inside the USPTO, including supervisory and quality-assurance roles.
Relevant Experience
USPTO examination and quality-assurance perspective
Robert J. Hill, Jr.
Robert Hill retired from the USPTO after more than 42 years of service. His career included work as a patent examiner, Supervisory Patent Examiner, and Review Quality Assurance Specialist, with extensive experience evaluating examination quality, Office Actions, examiner reasoning, and prosecution issues.
HPC applies that background, where relevant, to litigation questions involving USPTO examination and patent-prosecution practice.
42+ yearsUSPTO experience
5,300+Office Actions reviewed
~1,000Appeal / Pre-Appeal conferences
1,900+Cases consulted on
Potential Areas of Assistance
Focused on USPTO examination and prosecution practice
The appropriate scope depends on the issues presented in the particular matter.
Prosecution-History Analysis
Review of the application record, including claims, amendments, arguments, cited references, examiner positions, and relevant procedural events.
Examination Quality & Review Practice
Analysis informed by long-term experience reviewing examination quality and evaluating whether examination work was supported and appropriately reasoned.
Appeal & Pre-Appeal Practice
Perspective informed by substantial participation in appeal and pre-appeal conferences and review of disputed examination issues.
Patent-Prosecution Procedure
Analysis of procedural and practice questions arising from prosecution before the USPTO, as appropriate to the issues in the engagement.
USPTO Record Review
Review of relevant patent and prosecution materials to assist counsel in understanding the examination and prosecution issues presented by the record.
Engagement Scope
Expert work is scoped to the needs of the matter
Possible forms of assistance
- Consultation with retaining counsel
- Review and analysis of prosecution histories and related materials
- Written opinions, declarations, or reports when appropriate
- Deposition or other testimony when included in the engagement
- Other expert assistance concerning USPTO examination or prosecution practice
Engagement process
Expert-witness inquiries ordinarily begin with the free initial consultation and conflict review. The scope of the requested expert work, relevant parties, timing, materials, and other engagement-specific requirements are then evaluated before the engagement terms are finalized.
Fees are provided after discussion of the engagement.
Expert-witness fees and terms are determined after considering the anticipated scope and requirements of the matter.
Depending on the engagement, terms may address matters such as deposition or testimony requirements, travel, expenses, scheduling, and other expert-specific circumstances.
Discuss a potential expert engagement.
The initial consultation can be used to identify the parties, general subject matter, requested assistance, and timing so that HPC can conduct the appropriate conflict review and determine whether HPC can accept the engagement.