Will your patent be rejected?
Yes for utility, and probably not for design. Here are statistics on whether your patent will be rejected.
- A nonprovisional utility patent application has a roughly 90% probability of at least one rejection.
- A design patent application has an approximately 86% chance of approval.
Basically, expect a utility patent application to be rejected at least once. So don’t freak out or get disappointed when your utility patent application is rejected. It’s quite normal. In fact, you’ll be in good company with the vast majority of utility patent applicants who have encountered similar obstacles.
In contrast, a typical design application may sail through an allowance without any Office Actions. I can’t help but notice that odds of a patent rejection are almost at polar opposites for utility patent applications versus design patent applications.
How to respond to utility patent rejections
Of all possible claim rejections, the most common rejections in utility patent applications will be based on the prior art. In other words, examiners will typically reject a utility patent for not being new or unique enough. Even if you think your invention is new, your utility patent app might get rejected for being obvious.
So how should you deal with prior art rejections? Your patent attorney must carefully analyze the prior art and then convince the examiner your claimed invention is both novel and nonobvious. It sounds simple, but it’s anything but. One effective strategy is to understand the prior art better than the examiner does. Effective Office Action responses typically contain very detailed technical reasons for why the prior art fails to show the patent-pending invention.
Arguing, however, is only one of several tactics to consider. Claim amendments may be required to refine your invention so that it’s not so broad. This involves a compromise. As your independent claims are narrowed, it becomes easier for competitors to design around those claims. That, however, is the sacrifice you need to consider in order to get your utility patent allowed.
How to respond to software patent rejections
In software patent applications, a common rejection is the ineligible subject matter rejection based on Section 101. These rejections may overlap with prior art rejections discussed above. In other words, the more unique your software invention is, the more eligible the subject matter.
If it sounds confusing, join the club of software and startup applicants trying to make sense of USPTO patent eligibility rejections. A seasoned patent prosecution attorney with business method experience will come in handy.
File a new utility patent application with added content?
Sometimes it may make sense to add more content in order to have more features to claim. In those circumstances, you may consider filing a CIP application in lieu of, or in addition to, an Office Action response.
How to respond to design patent rejections
In design patent applications, Office Actions may occasionally occur. Most design Office Actions contain objections to the drawings that can be corrected to comply with the strict USPTO design drawing requirements.
Every once in awhile, a design patent may be rejected based on the prior art. In particular, the examiner found a prior product or literature that shows the claimed design. Such prior art rejections may often involve non-patent literature (NPL) such as webpages, catalogs, marketing materials, ecommerce listings, etc.
If the cited prior art happens to belong to the inventor, a proper response may be filed with an inventor declaration to remove the cited prior art reference if its date is not too old relative to the application filing date.
Does an international PCT application get rejected?
Technically speaking, PCT patent applications are not rejected since they never get allowed. In the pursuit of foreign patent protection, PCT applications generally serve as a way to buy more time and preserve cash flow. That being said, PCT applications are still examined with the results being summarized in search reports that read similar to US Office Actions.
These search reports may contain a mix of favorable and unfavorable opinions on the claims in the PCT application. In turn, the applicant has an opportunity to amend the PCT claims before entering the national stage. Ultimately, the foreign patent office of each national stage country or region will approve or reject the claims, but entering the national phase will claims in better condition may save time and money in the long run.