Quick Summary

Patent Denied: What You Need To Do After A Patent Rejection

Patent Denied: What You Need To Do After A Patent Rejection

1. Identify the reasons for the rejection

2. Identify your best arguments and/or amend your claims

3. Interview the Patent Examiner

4. Submit a written response that clearly addresses each rejection

5. Know the difference between non-final vs. final rejections (it's not what you'd think)

Patent Denied: What You Need To Do After A Patent Rejection

16 min read time

Let me first say, I feel your pain. You’ve spent thousands of dollars on a patent attorney to file your patent application. Or, you’ve spent hundreds of dollars and oodles of your own time. Now, you’re staring down at a dense letter with the bold word “REJECTION” at the top.


But let me reassure you: THIS IS NOT THE END. And, you’re not alone. In fact, most granted patents were initially rejected for one reason or another. The unfortunate reality of the patent system in any country is that the rules are numerous and dense. That means that a patent examiner can find any of a thousand different reasons to reject your patent application, all of them buried in a thick tome that describes all the rules for getting a patent.


So, if it’s not the end, what do you do? Below I’ve outlined four steps you can take to address the rejection of your patent and ease your troubled mind. With each of these steps, I’d strongly encourage you to consult with an experienced patent attorney. In general, the law is a unique language, with loaded jargon and various formalities that can ensnare the uninitiated.


I’ll be candid: as a patent attorney with experience getting hundreds of rejected patents allowed, I hate that the law is so unapproachable to the people who sit at its mercy. That’s why I’ve provided this guide to help you navigate the intricacies of patent law.


However, there is no substitute for the years of dedicated experience it takes to become an expert in patent law, so your best bet is to find an attorney who knows what they’re doing.


1) Identify the Reasons for the Rejection

Patent Examiners are required to provide patent applicants with written explanations on the reasons their patent applications are rejected. These reasons are provided in a letter called an “Office action.”


If you are already working with an attorney, have them explain to you the reasons for the rejection in plain terms, i.e., not using “legalese.” (By the way, if your patent attorney can’t explain the reasons for your rejection in terms simple enough for you to understand, they probably don’t understand the law very well themselves; it might be time to get new counsel!) Your patent attorney should be able to clearly lay out what the rejections are and what the best strategy is for responding to the rejections. And, if your patent attorney says you’re DOA, I’d get a second opinion. Most patent applications are initially rejected, and there is usually a way to overcome the rejection.


If you don’t have a patent attorney and/or if you filed your patent application pro se (on your own without legal representation), then here is a quick-and-dirty guide to what the most common rejections are.


Objections:

As it turns out, these aren’t actually rejections. Rather, the examiner is pointing out “informalities” that need to be corrected before your application can be granted as a patent. An informality is generally a grammatical or structural issue with the claims of your patent. For example, a Patent Examiner may issue an objection if your patent claims include words that are misspelled, incorrect grammar, or if your application doesn’t conform to the rules for how applications should be drafted. The good news: the Examiner probably included in the notice instructions or recommendations for how to address the informalities. And, if they didn’t, step 2 below tells you how to find out.


112 Rejections:

The patent rules require that the invention you claim be 1) fully enabled, and 2) supported by a written description. Now, before you freak out because you didn’t write your patent application like a text book on all the various aspects and related principles of your invention, keep this in mind: patent applications only have to include enough detail that a person of ordinary skill in the relevant technical field would understand how to make and use your invention. You have to be careful not to leave out important details, such as in an effort to hide some critical features of your invention.


The written description requirement means that you can’t just state the general goal of your invention or use crafty language to hide the true crux of your invention.


Another person in your industry should be able to make and use your invention based on what is described in your patent application. That doesn’t mean you need to have an instruction manual; rather, your patent application should be specific enough to be clear to someone in your industry, but you can omit things that would be logically inferred.


For example, if you’ve designed some new software, your patent application has to describe what the software does at the computer-level, but you don’t have to write out the entire code for your software.


The enablement requirement means that you can’t leave out anything that is absolutely necessary for your invention to operate. For example, if you design a new turbine for jet engines that uses fuel more efficiently, you can’t leave out the fuel injection mechanism. One way to think about enablement is to identify the key element of your invention and then describe all the things around it that make it work.


Often, 112 rejections are issued for “lack of clarity” or “indefiniteness.” This typically falls under the written description umbrella; essentially the examiner is saying there are aspects of your application that are unclear or vague.


Most of the time, this kind of rejection is issued because of how your claims are written. There are a number of rules, such as maintaining proper antecedent basis and using different words to refer to different things. Sometimes, the Patent Examiner will offer suggestions for how these issues can be fixed.


If you’ve received a 112 rejection, it is likely because your application does not include sufficient detail about your invention, because you haven’t described all the necessary pieces to make your invention operable, or because at least some of the language in your claims is unclear.


In some cases, a simple amendment will fix the problem (but, pay attention - more on this below). In other cases, you may have to file a new application. In those cases, you may still be able to have the benefit of the filing date of your original application, but you’ll have to include sufficient detail so that you don’t get another 112 rejection.


101 Rejections:

The patent rules limit what discoveries can be patented. The first requirement is that the invention must be somehow useful. In practice, this means that anything that doesn’t violate the laws of nature is “useful.” Let’s be clear here, the bar for utility is VERY LOW.


So, while you can’t patent a perpetual energy device (which would violate the laws of thermodynamics), you can patent something like a vest with tubes for your gerbil to run around in, or thong underwear that goes over your shoulders (patent applications have been filed for both these inventions, and both passed the utility bar!).


The second requirement for patentable inventions is that they are a process (e.g., a method, including computer-implemented methods, aka, software), machine (e.g., electronic and mechanical devices), manufacture (e.g., some tangible product made through some sort of process), or composition of matter (e.g., pharmaceuticals, new plant species, etc.). If you’re thinking what I think you’re thinking, you’re right: pretty much any man-made thing is patentable.

Unfortunately, there are a couple caveats here: you can’t patent things like mathematical equations, processes that could be performed in your head or using a pen and paper, processes that simply apply laws of nature, or other abstract ideas.


This is where many software patents and biomedical patents get hung up. But, with a skilled patent attorney, even software can be patented!

102 Rejections: In order to obtain a patent, your invention has to be “novel,” meaning that no one else has patented or tried to patent the same invention, or otherwise disclosed the same invention to the public. In order to issue a 102 rejection, the Patent Examiner has to identify a single reference, typically a patent-related publication, that describes all the features of your invention. The Office action will include a list of the elements of your invention (as described in the claims section of your patent application), along with citations to where in the prior publication the element is described. This list is typically in paragraph form or a bulleted format.


The easiest way to overcome a 102 rejection is by pointing to an element of your invention that is not described in the prior publication. You can do this by making a direct argument, such as when the Patent Examiner incorrectly characterized an element of your invention. Or, you can do this by amending the claims section of your patent application to include an element not described in the prior publication.


103 Rejections:

One more hurdle to getting a patent is proving that your invention is not something people in your industry would consider “obvious.” Essentially, this means that you can’t have a patent for something that, while not explicitly described in a publication or otherwise available to the public, would nonetheless be a no-brainer for someone in your industry.


Even if your invention is a clever solution to a pesky problem, if all the parts and pieces are already available in a form that generally resembles your invention, you might not be able to get a patent.


103 rejections are written up the same way 102 rejections are, with a little twist. Typically, a 103 rejection is based on two or more prior publications. The Office action will list the elements of your invention and corresponding citations to the prior publications, similar to a 102 rejection.


Additionally, a 103 rejection may include a statement that a particular reference does not describe an element of your invention, but that another reference does. The Office action will then describe why it would be obvious to combine the things described in the two references.


Addressing a 103 rejection is a little bit trickier than addressing a 102 rejection. There is no limit to the number of references a Patent Examiner can combine to reject your patent application.


There are a variety of strategies patent attorneys use to overcome 103 rejections, and each one is tailored to your specific invention. If you have a 103 rejection and don’t see an obvious reason why it’s wrong, I would, again, strongly encourage you to connect with an experienced patent attorney. Find one that is experienced in your industry, as that specialized industry knowledge can come in handy when addressing 103 rejections.


Allowable Subject Matter:

Sometimes, the Patent Examiner will identify one or more dependent claims (i.e., claims that incorporate, by reference, all the features of a previous claim; dependent claims typically start with some variation of “The invention of claim X, [additional element]”) that would be allowable if the independent claim hadn’t been rejected.


An easy path to a patent is by amending the independent claims to include the elements or features described in the allowable dependent claim. However, you want to carefully consider whether such an amendment narrows your claim too much. If it does, you’ll have a patent that’s more useful as a napkin than as an assertable right.


2) Identify Your Best Arguments and/or Amend Your Claims


Once you have a handle on why your patent application was rejected, you can start to flesh out a strategy for addressing the rejection. In some cases, you’ll want to become familiar with the rules and regulations for patents. The USPTO publishes a manual on patent examination and procedure that includes helpful, although dense, information on addressing rejections.


To reiterate: if it can be avoided, don’t go at this alone. An experienced patent attorney is well-versed in the patent rules and the language of the USPTO. They know what to say and how to say it so your patent application can be granted. If you don’t have the funds to pay a patent attorney, there are legal aid organizations that may be able to help you at no cost or reduced cost. Additionally, if you filed your application pro se, the USPTO has a special group of examiners trained to work directly with inventors. More on this below.


As a last resort, you can address the rejections by drafting a letter responding to each basis for the rejection. You’ll want to be careful to address every rejection for every claim. Start by identifying what needs to be fixed in your independent claim(s).


Make amendments where necessary, and be sure to follow the very specific, almost obnoxious rules for making amendments. If you identify a mistake made by the Patent Examiner (e.g., the Patent Examiner says a reference discloses an element of your invention, but it really discloses something else), be sure to focus your arguments on the cited publication, what is disclosed in the publication, and what isn’t. Try to avoid characterizing your claims. When you have to refer to your claims, quote the claim language verbatim.


3) Interview the Patent Examiner


If you’re working with a good patent attorney, they will likely schedule an interview with the Patent Examiner to discuss the rejections and possible responses. In some cases, such as where the only things that need to be addressed are formalities, your patent attorney may not schedule an interview. But, if you have any substantive rejection (e.g., 101, 112, 102, or 103) and your patent attorney does not schedule an interview, seriously consider firing them and looking for an attorney that will do an interview.


If you’re going stag, so to speak, and you have formulated your response to the rejection, schedule an interview with the Patent Examiner directly. The patent rules require Patent Examiners to accept and participate in interviews after a non-final rejection when requested by the application and/or the applicant’s attorney or agent.


At least 24 hours prior to the interview, email a brief agenda to the patent examiner that lays out what you would like to discuss. You can propose claim amendments and make arguments, but don’t be too long-winded. Patent examiners are only granted one hour to prepare for and participate in an interview.


Start the interview by asking the patent examiner what their thoughts are on the agenda you sent. Let them talk, and listen closely. Patent examiners are essentially judge, jury, and executioner for your patent application.


If you filed your application pro se, your application will likely be assigned to a patent examiner specially trained to work directly with inventors. The patent examiner will give you clues or outright tips in plain English (as opposed to the gobbledygook you’ll find in the Office action) about what you need to do to get your patent application allowed.


If there are points the patent examiner brings up that you don’t agree with, politely disagree, but understand that arguing with the patent examiner will get you absolutely nowhere.


Patent examiners have told me outright that they have examined applications they thought could be allowed with minor changes, but they weren’t willing to offer up that information because the person on the other end was a jack*ss, so the application went abandoned.


Just to reiterate this crucial point: the patent examiner is not your enemy. During their training, they are hammered with this point: they work at the patent office, not the rejection office.


While their role is to ensure patents conform to the rules and regulations for patents, they do not see themselves as patent slayers. Most patent examiners are more than happy to help you figure the process out. But if you come in hot, start throwing around accusations, and treat them like an adversary, the fountain of insight they can offer will be cut off.


I take this so seriously that, when I talk about rejections during interviews and in written responses, I use the passive language, “the Office action states X,” as opposed to making a more personal reference about the patent examiner. And trust me when I say, this act of civility does not go unnoticed, and I have been able to get many patent applications allowed based predominantly on having a good rapport with the patent examiner.


4) Submit a Written Response that Clearly Addresses Each Rejection


If you’re working with a patent attorney, they will draft a formal letter responding to and addressing each of the rejections. Before they submit the response, they should provide you a copy to review.


If they don’t, it’s time to find new counsel. Read the entire response, but keep your eyes peeled for two things in particular: 1) review the claims and pay special attention to any amendments to ensure they don’t render the claim too narrow or take the claim in a direction that isn’t valuable to your business; and 2) make sure that every rejected claim is addressed. Once you give your attorney the thumbs-up, they’ll file the response and you’ll be back in the holding pattern waiting for more word from the patent examiner.


If you’re drafting the response yourself, look on the internet for an Office action response template. You’ll want a cover page that identifies your application and the Office action you are responding to.


On a separate page or pages, list the claims with the proper identifiers indicated in the patent rules (i.e., “Original,” “Currently Amended,” “Withdrawn,” “Canceled,” and so forth, each in parentheses after the claim number and before the first word of the claim). You’ll need additional separate pages if you’re making amendments to the specification and/or drawings. Then, again on a separate page, start the substance of the response. Make sure to address each rejection and each claim, and conclude with the assertive statement that the claims are allowable and request the rejection(s) be withdrawn.


5) Note on Non-Final vs. Final Rejections


You might notice that I haven’t addressed whether these tips apply to non-final rejections or final rejections. Indeed, you may have assumed they only apply to non-final rejections because, hey, if it’s final, it’s over. Fear not! Even if you receive a final rejection of your patent application, it isn’t actually “final.” You can still submit a response to a final rejection! And, if you submit the response within two months of receiving the final rejection under a program called the After-Final Consideration Pilot 2.0, you can expect to receive another letter from the patent examiner within a month addressing your response. This is called an Advisory Action.


If your patent application remains rejected after your response to the Final rejection, you can file a response with a Request for Continued Examination (RCE). For a small fee, you can start the process over again, re-interview the patent examiner, make new arguments, and make new amendments. In theory, you could do this indefinitely.


Tl;dr: Just because your patent application was rejected doesn’t mean it’s dead. If you can, hire a skilled and experienced attorney, preferably with expertise in your industry. Review the rejection to understand the specific reasons your application was rejected.


Interview the patent examiner to get their perspective and insights in plain, conversational language. Don’t treat the patent examiner like an adversary! Having a good rapport with the patent examiner can be your ticket to a granted patent.


Write and file a response to the rejection, making sure to address every rejected claim. And, if that fails, rinse, lather, and repeat until you have a patent!

Conclusion

Patent Denied: What You Need To Do After A Patent Rejection

Patent Denied: What You Need To Do After A Patent Rejection

1. Identify the reasons for the rejection

2. Identify your best arguments and/or amend your claims

3. Interview the Patent Examiner

4. Submit a written response that clearly addresses each rejection

5. Know the difference between non-final vs. final rejections (it's not what you'd think)

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