Has your utility patent application been rejected?

If so, welcome to the club. Approximately 90% of utility patent applications will get rejected. Utility applications often receive multiple patent rejections. So do not be disappointed. Rejections are the norm for utility patents. This article will help clarify a patent rejection so that you can form an effective Office Action response strategy with your patent attorney.

Is your patent application is being rejected over prior art?

Most patent rejections will be based on the prior art. These rejections mean that the examiner does not think your claimed invention is new enough. Prior art rejections basically fall under two categories: anticipation and obviousness.

Anticipation means that every element in a rejected claim can be found in a single prior art reference. These claim rejections are known as Section 102 rejections, based on 35 USC 102. Since the opposite of anticipation is novelty, a claim that is novel means the examiner was not able to find all the claim elements in a single prior art reference.

So, is novelty enough to get a claim allowed? No, because a claim might still be obvious. If the examiner can combine two or more prior art references to find all the elements in a particular claim, the claim may get rejected for being obvious. An obviousness rejection is known as a Section 103 rejection, based on 35 USC 103.

What are common rejections when applying for a software patent?

Patent applications for software or business methods may encounter an eligibility rejection under Section 101. A Section 101 rejection means that the examiner thinks your patent application claims ineligible subject matter. According to the examiner, the software you seek to patent is not eligible for patent protection. This is a rejection based not on the prior art, but more on technical details of your technology. Overcoming Section 101 rejections can be challenging.

What is a minor patent rejection?

A rejection based on indefinite claim language is generally minor in nature. Patent attorneys can often clean up claim language to overcome a Section 112 rejection without assistance from inventors.

Likewise, drawing objections may be resolved by having a patent illustrator provide cleaner or cleaner figures. A drawing objection based on a claimed feature not shown in the figures is more of an objection to the claim than the drawing. A simple solution is to delete the claim language reciting the feature missing from the drawings.

How should you respond to a patent rejection?

A first patent rejection is called a nonfinal Office Action. The cost and complexity of an appropriate response will depend on several factors. Does the Office Action contain both Section 102 (anticipation) and Section 103 (obviousness) rejections? Is a Section 101 rejection involved? How many prior art references are being cited?

It may make sense to talk to the Examiner prior to filing a written response in certain circumstances. For example, if it appears that the examiner does not quite understand the invention, an Examiner interview may be helpful.

We recommend the First Action Interview (FAI) program because it gives us a chance to see the prior art and talk to the Examiner before a first patent rejection is issued.

How many times can your patent application get rejected?

It is not uncommon for a utility patent application to get rejected multiple times. Just because you receive a second or third Office Action does not mean your patent attorney was unsuccessful. For example, your patent attorney may prevail over the claim rejections in a first Office Action with a combination of claim amendments and arguments. Instead of allowing the claims, however, Examiners may search for new prior art to reject the amended claims.

In such cases, your first response was successful. However, the examiner searched for more prior art references in order to issue a second rejection. This happens all the time. If and when you receive a subsequent rejection, do not be discouraged. Study the claim rejections with your patent attorney and prepare your next response. You may have to go through several iterations until you get some claims allowed.

If that does not happen soon enough, you will need to decide whether you wish to appeal or abandon the application. You may even consider filing a CIP application and abandoning the parent application so that you can new matter which will hopefully make your claimed invention more patentable.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys help innovators get IP that drives funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com