(of a bad or harmful act) intentional; deliberate.
“willful acts of damage”
There was a time courts treated willful infringement simply as intentionally copying a patented invention. The onus was on the plaintiff to present convincing and clear evidence of an obvious infringement. Then, things changed; the alleged infringer had to build a record to show that it did not act in bad faith. In 2016, the US Supreme Court issued an opinion wherein they stated that the Patent Act provides for the enhancement of damages up to three times in case of proof of infringement.
You can no longer ignore the infringement notice; it will be considered a case of willful infringement!
Whether Willful Infringement or Not – Notice is here. Now What?
The logical first step would be to check the following:
Is the notice from a genuine patent holder or a patent troll?
How strong is the subject patent?
Does it really infringe?
What’s the existing prior art?
Has it genuinely been overlooked by the innovation team?
Was the innovation very easily available?
Did it not occur to the development team that something so easily available might be patented?
Once you figure out if there is any merit in the notice, it’s time to decide which route to take – settle this dispute or fight the good fight in the court.
A couple of things to remember.
A settlement is almost always a good idea. Only if you see merit in the infringement notice, you have received.
Taking the court route is exceptionally resource-heavy. It will drain your enterprise of time, energy, and of course, money. It might be worth depending on what’s at stake.
After weighing all considerations, if you believe that an out-of-court settlement works better for you, there won’t be any need to respond to the notice. But first, ensure your settlement agreement is air-tight regarding court claims against you.
You must reply to the notice if you go down the legal route through the courts.
Check Patent Strength
Wonder if there’s a quick and effective way to help you decide which route to take? A tool that enables you to gauge the strength of the patent without even employing your IP team? The business’s IP resources must only look into the matter if the subject patent appears strong.
Imagine a search tool that can access any technical information – patent and non-patent literature. Furthermore, this search tool possesses an advanced algorithm to find only relevant results. To top it all – searching for technical information on such a platform is a piece of cake. Sounds unbelievable?
We hear you; however, it’s possible to create such a tool with advanced AI capability to interpret the patent language. We’ve taken the first step towards building such a tool. We call it PQAI – Patent Quality Through Artificial Intelligence.
PQAI is a collaborative initiative that aims to leverage AI to create a tool we just described. We envision – “A universal repository of humanity’s entire technical knowledge efficiently accessible to everyone and anyone.”.
PQAI is far from perfect at the moment, but it’s definitely promising. We say that with confidence because of the results that various validation test cases we have run have given us. For example, we identified some IPR cases a few months ago and ran the subject patents through PQAI. In some of these cases, we observed that PQAI was able to find the prior art cited by the sued party to invalidate the subject patent. We’re sharing one of those cases with you right here:
Facebook VS Villmer LLC Inc
Facebook had received an infringement notice over Oculus Go from Villmer. We used PQAI to run a prior art search to see if it could have helped locate prior art. It gave us results that matched the prior art submitted to have the patent invalidated.
The patent that was the subject matter of the litigation bore the number US9618747. The patent broadly pertains to head-mounted displays. Villmer’s infringement allegations focused on Facebook’s head-mounted virtual reality (VR) devices, the Oculus Go and the Oculus Quest. The ’747 patent was valid, enforceable, and duly issued in full compliance with US law.
We picked up claim 1 from patent number US9618747 and pasted it in the PQAI query box. Here’s a screenshot of one of the prior art that Facebook listed during IPR to have ‘747 invalidated.
Here’s the prior art PQAI spotted against our search for Claim 1 from ‘747. The spotted patent bears no. US2012005053A1, one of the prior arts listed by Facebook:
PQAI is a search tool that is a work in progress. We would like to see it get to a stage where prior art like this ranks higher and results are even more efficient. And we are constantly working toward perfecting the system.
Get Involved – Join the PQAI Initiative
PQAI is a collaborative initiative to build an AI-powered prior art search tool accessible to all involved. We would love all stakeholders to come forward and join the initiative. You, as a corporate, can contribute too! The question is, why would you?
With PQAI, we aim to create a more stable and transparent patent ecosystem for corporations. We believe it will make R&D investments more predictable, increase confidence in patents, and make risks and opportunities more visible. We could use all the resources to make this initiative successful. You could be part of this revolution by funding the development of the tool. In return, you will give yourself and the world a system to file better patents.
Disclaimer – “The statements and views expressed in this post are intended for general informational purposes only and do not constitute legal advice or a legal opinion.”
Got a patent rejection? Almost 90% of patent applications receive at least one non-final patent rejection! So let’s dig deeper to understand the best practices while filing patent applications.
You have invested your retirement savings developing your idea and have spent years perfecting your invention. As things progress, you assist your patent professional with drafting your patent application, meticulously putting together the right words and drawings to describe and showcase your invention.
Finally, after years of waiting, you receive a notice from the patent office rejecting your invention. Is it time to give up?
Not at all! You can utilize several resources that can assist you with understanding what the rejection is and how you might be able to overcome this rejection on your limited patent prosecution budget.
It would help if you understood that you would likely receive a first rejection (i.e., a first Office Action) and a second rejection (i.e., a second Office Action) in the same application. For example, a study by the US patent office found that the average number of Office Actions a patent examiner will prepare per utility patent, which proceeds to issue in the fiscal year 2019, was 1.7.
Once you receive a rejection of your invention, you receive an opportunity to amend your application and argue against the examiner’s rejections. First, however, you must understand why the patent examiner rejected your patent. Such an understanding will allow you to engage better with the patent office. In addition, following such precautionary steps will allow you to avoid rejection pitfalls for the same patent application and future patent filings.
Patent Rejections are Common
Patent rejections are very common. For example, according to a recent study at Yale University, almost 90% of all patent applications receive some patent claim rejection. But conversely, 60% of all patent applications are eventually issued as patents.
It will help if you understand that a rejection is just the beginning of negotiating with the patent office. In this post, we will discuss preventive measures you can take to avoid rejections and actions to take after receiving a (non-final) rejection.
Initial Precautionary Measures
One way to achieve a timely, cost-effective resolution to seeking a patent is to hire a knowledgeable patent attorney before you begin preparing your patent application.
A patent attorney will rigorously prepare your patent application, work with the patent office, and help your application eventually mature as an issued patent. In addition, engaging a knowledgeable patent attorney will reduce the number of patent rejections you receive, reducing the overall costs of patent “prosecution.”
Precautionary Measures While Drafting Utility Patent Applications
The utility application accounts for most applications filed in the US patent office. For example, according to recently published statistics, the US patent office received roughly 621,000 utility applications in 2019. Your utility application will generally include three principal components: a detailed written description, figures or drawings, and patent claims.
Detailed Written Description
The detailed written description provides a list of your invention’s elements. The description may include how to make, assemble and use the elements. For example, the detailed explanation may consist of specific headings, such as the invention’s title, technical area, the background of the invention, a list of included drawings, and, most importantly, an in-depth, detailed description of your invention. In addition, it explains the illustrations in the figures.
Please know that its primary purpose is to provide an understanding to a person of “ordinary” skill in the art of using your invention. Adequate coverage will help others understand your invention, and it may even help the examiner when they read your patent application.
To avoid rejections, please verify that all elements and components in your detailed description appear somewhere in your drawings, including methods, processes, and steps. Conversely, you should also confirm that all elements in your figures are described or explained in your detailed description.
Consider engaging a professional draftsperson to prepare your drawings; a true professional has a solid grasp of patent regulatory norms and sufficient artistic skills to make patent drawings acceptable to the respective patent office.
For utility applications, a typical draftsperson will charge about $30-50 per figure and about $40-60 per figure for design patent drawings.
Patent claims are the most critical parts of your application because they define the legal boundary of your invention.
Patent claims are different from detailed descriptions.
For example, your may amend your patent claims during your correspondence with the patent office to broaden or narrow down the scope of your invention.
In contrast, you cannot substantively amend your detailed description aside from amending typographical errors. And you cannot add new subject matter to your detailed description after you file your application.
The patent claims of your patent application define precisely the limits of what your filed patent application does and does not attempt to cover (i.e., the “scope” of your invention). Because of their importance, your patent claims will receive the most scrutiny from the patent examiner.
Filing Broad Patent Claims
You may strategically choose to pursue broad patent claims when you initially file your patent application—naturally, the broader your patent claims, the broader the “scope” of your legal protection.
The caveat is that your broad claims must not cover what was known before you filed your patent application (i.e., the prior art). Otherwise, you run a higher risk of rejection from your patent examiner.
Filing Narrow Patent Claims
Alternatively, you may file narrow claims that try to capture only a subset of technology. For example, you may file a narrow “picture” claim that captures every technical aspect of a preferred design or application.
However, narrow patent claims could allow your competitors to avoid or “design around” your patent claims, allowing them to use your invention without technically violating your patent claims.
Conversely, narrow claims typically receive fewer rejections from patent examiners.
Patent Office Review
All three components of the utility application can receive “objections” or “rejections.” The examiner can also take issue with the detailed descriptions and figures. The key is to overcome most objections and rejections by modifying the detailed descriptions, figures, and patent claims.
The patent office will first review to see if you filed a complete application that includes all the necessary parts.
A complete application includes the following:
at least one patent claim,
an inventor’s oath or declaration,
payment of the required government filing fees,
and drawings, if necessary, to convey the invention.
The inventor’s oath or declaration is a document that identifies the inventors and must contain certain required statements. The oath or declaration must:
Identify the inventor executing the oath or declaration by their legal name;
Identify the patent application;
Include a statement that the person executing the oath believes the named inventor to be the original inventor of a claimed invention; and
State that the application was made or authorized to be made by the person executing the oath or declaration.
If the patent office notifies you that you have submitted an “incomplete” application, you must provide the missing information and correct the deficiency noted by the patent office. Typically, you are given two months from the mailing date of the notice to file the requested information with the patent office.
Group Art Unit
After your complete application is filed, it will be assigned to one of the many technology centers at the patent office. First, the technology center will review the application papers to determine what technical or group art unit the application should be assigned. Then, once the technology center identifies your invention’s proper technical subject matter, it will assign your patent application to a group of examiners who have experience with the related technology.
Patent Examiner Review
A typical patent application will undergo multiple levels of review by the examiner. First, the examiner will determine whether to reject your application and issue a restriction requirement. Second, the examiner will review your application and analyze whether one of the primary four types of rejections is applicable.
The most common type of restriction is when you attempt to claim multiple inventions that are either independent (i.e., completely unrelated) or distinct (i.e., related but capable of separate manufacture and use).
The examiner will determine if your patent claims are trying to capture more than one invention. This determination ensures that the examination is not time-consuming and burdensome for the examiner to search for more than one invention when the fee you paid is to perform a single prior art search, not multiple searches for multiple inventions.
Let’s say you submit a patent application that directs to a new idea for making orange juice. Your patent application includes several patent claims. Your patent application consists of a first patent claim generally directed to your orange juice-making machine and includes the following elements:
a mechanism for selecting an orange,
a mechanism for squeezing the orange,
a collection device for collecting orange juice, and
a disposing device for disposing of the now empty orange peel.
Your patent claims also include a claim that generally directs to your method of making the orange juice, including the following four steps:
selecting an orange,
squeezing the selected orange,
collecting the juice from the squeezed orange, and
disposing of the empty orange peel.
Since you presented a machine patent claim and a method patent claim, the examiner may issue a restriction requirement and thereby reject your claims.
Such a rejection require you “restrict” your proposed patent claims and proceed with selecting either your orange juice machine-related claim or your orange juice-making method claims.
Selecting one claim over the other does not imply sacrificing the unselected claim.
For example, if you pursue your orange juice-making machine of claim 1, you will not be sacrificing your method claims. Instead, you can file a “divisional” patent application to seek the protection of your unselected method claim set.
The examiner then moves on to the substantive examination phase. The examiner may issue formality rejections, which are generally related to Sections 101 and 112 of the Patent Act.
Section 101 and 112 type formality rejections account for almost 30% of all rejections, with Section 101 rejections accounting for only about 8% of all examiner rejections.
For rejections based on the prior art, there are two primary rejections: a novelty rejection under Section 102 and an obviousness rejection under Section 103, both under the Patent Act. Rejections based on Section 102 account for roughly 21% of all rejections, whereas those based on Section 103 account for approximately 47%.
Let’s take a quick look at each of these rejections and why the examiner might issue them. Then, we will discuss the substance of the rejection and identify specific preventive measures to avoid receiving them in your current and potential future patent applications that you might file.
Section 101 Rejections
Section 101 Rejections relate to the idea of “double patenting.” A patent is a government grant that gives you exclusive rights to your invention for a limited period. According to Section 101, you should not be allowed to extend the time limit by obtaining multiple patents for the same invention or its obvious variations.
There are two kinds of double patenting. “Statutory” double patenting prevents you from having two patents with the same invention. Because double patenting requires the same claim in two patents, a statutory double patenting rejection is relatively easy to avoid and is uncommon.
“Obviousness-type” double patenting prevents you from obtaining a patent with a claim that is obvious over a claim in another of your patents. The principle behind the doctrine is that you should not be able to extend the life of your first patent by obtaining a second patent with a claim to an obvious variation of your previous invention.
One way to overcome these “double patenting” rejections is to file a legal document called a “terminal disclaimer.” In the disclaimer, you agree that your second patent will expire at the same time as your first patent. The patent office provides a standard form for filing such a terminal disclaimer. You can find a copy of this form here.
Patentable Subject Matter
The examiner will ensure that your application meets the legal requirements for patentability. This requirement includes whether your patent application is the right subject matter for protection under Section 101 of the Patent Act.
Section 101 states that patents may be granted on “any new and useful process, machine, manufacture, or composition of matter.”
However, suppose your invention is not a process, machine, manufacture, or composition of matter. In that case, your invention is not patentable because your invention is not the right type of invention and will therefore be rejected.
For instance, if your patent application claims that your invention is an electromagnetic wave having certain characteristics, your application will be rejected because a wave is not a “process, a machine, a manufacture, or a composition of matter.” Likewise, pure data (meaning data claimed alone instead of data residing on a computer or manipulated during a computer process) is also unpatentable and will be rejected.
Abstract ideas, laws of nature, and natural phenomena are exceptions to the statutory subject matter. Inventions considered abstract ideas or laws of nature are not patentable because they are not the right type of invention.
These exceptions to subject matter eligibility have become much more critical in the last few years, especially for software inventions. In fact, according to a recent post at IPWatchdog, approximately 60% of software patent applications reviewed by the Patent Office are initially rejected under Section 101 because the software invention is considered to be directed toward an abstract idea.
There are two different types of Section 101 rejections. First, the examiner says your invention does not fall within one of the four statutory categories. Or second, the examiner states that your invention falls under one of the patent-ineligible exceptions. In either case, such a rejection does not have to be the end of your patent application.
Section 101 Precautionary Steps
In most cases, you can overcome these 101 rejections by revising your application to explicitly claim one of the four statutory classes: a “process, a machine, a manufacture, or a composition of matter.”
For instance, instead of claiming an electromagnetic wave has specific characteristics (which is a non-patentable invention), you can revise your claims to cover a method for creating that wave (statutory under the “process” category). Alternatively, you can modify your claims to cover a device that creates the wave (statutory under the “machine” category).
In some cases, the broadest reasonable interpretation of a claim may cover both statutory subject matter and subject matter that does not fall within one of the four classes. For instance, “machine-readable media” claims include physical computer memory and transitory electromagnetic waves.
Section 102 – Novelty of Invention
Prior art rejections are the most common rejections issued by US patent examiners. As noted in the graph below, almost 70% of all rejections issued by examiners are based on some prior art.
One of the legal requirements to obtain a patent on your invention is that your claimed invention must be “new” or “novel.” In other words, you must be the first inventor to have invented your invention before anyone else. A prior invention is typically something that was publicly known or publicly available before your invention.
It is known that roughly 21% of all Examiner rejections are related to novelty rejections under Section 102 of the Patent Act.
For example, in our sample claim, let’s assume you have decided to pursue your orange juice-making machine invention. The examiner will review your claim and then search through the prior art to determine if they can find the following in the prior art:
An orange squeezing apparatus that includes
1. a mechanism for selecting an orange,
2. a mechanism for squeezing the orange,
3. a collection device for collecting orange juice, and
4. a disposing device for disposing of the now empty orange peel.
The examiner will search available sources (e.g., granted patents, scholarly publications, industry publications, etc.) to ensure that your application’s claimed orange squeezing invention deserves patent protection.The examiner may also use non-patent literature, including magazine articles, newspaper articles, electronic publications, online databases, websites, or internet publications.
For example, suppose the examiner identifies prior art that they believe shows an orange juice-making machine, including all four machine elements recited above. In that case, your claims will be rejected as lacking “novelty.”
One Reference Showing All Elements
There are two critical pieces of information that you must analyze to determine novelty.
First, you must identify the expressed words of your patent claims and all their limitations. Second, you must review the cited printed publication that the examiner relies upon and understand what the printed publication teaches. An application may be rejected under Section 102 only if a single prior art reference matches every element of your claimed invention.
Another critical point is that the printed information that the patent examiner relies upon must be “prior” to your invention. Therefore, the printed information must bear a publication date earlier or “prior” to your filing date.
Here is an example of a hypothetical anticipation rejection. Recall our hypothetical invention for your orange juice machine. As noted, your orange juice machine invention includes four components:
A mechanism for selecting an orange
A mechanism for squeezing the orange
A collection device for collecting the orange juice
A disposing device for disposing of the empty orange peel
Let’s say the examiner rejects your orange juice machine claim. Specifically, the examiner states that your orange juice machine is not patentable as your invention lacks novelty over a patent published in the United Kingdom that names John Smith as an inventor (i.e., “the Smith patent”). The Smith patent, written in English, is entitled “Orange Juice Making Machine.” Upon reviewing the Smith patent, you recognize that, yes, the patent generally directs to an orange juice machine. However, you realize that the Smith patent does not teach any mechanism that allows selecting one orange over another before squeezing the orange.
While explaining your patent application, you can state your invention’s advantage. It can be an orange selection based on size, color, or another characteristic. Your invention allows your apparatus to select a higher-quality orange over a lesser-quality orange. In contrast, you note that the Smith patent merely describes an orange juice maker that randomly selects oranges, irrespective of their color, size, or another characteristic. In the Smith patent, there is simply no “selection of an orange.” Whereas your patent claim expressly recites “a mechanism for selecting an orange.”
Since anticipation requires that a single prior art printed document contain all of the elements in your claim, you can argue to the examiner that the Smith patent does not “anticipate” because Smith lacks teaching of some mechanism that selects an orange.
Another option to address the examiner’s anticipation rejection is to amend or clarify your orange juice apparatus patent claim. For example, you can amend your orange juice machine claim to clarify an element, add a new element, or do both. You must, however, support your proposed clarification in your application as filed. In our example, if the Smith patent fails to disclose “a mechanism for selecting an orange,” you can amend your claim to further differentiate your invention from the orange juice machine disclosed in the Smith patent.
Reference Must Be Prior Invention
Another critical issue is that the printed information that an Examiner is relying upon as “prior” art must bear a publication date that is “prior to” or “before” your invention.
Returning to our hypothetical rejection of your orange juice machine, let’s say that upon a closer review of the Smith patent, you observe that the patent was originally filed in the UK.
As is typical with the UK or European type documents, you note that the Smith patent uses a European date format. The Smith patent references a publication date by way of a date format where the day comes first, then the month is referenced, and then the year is listed. The Smith patent identifies a publication date as: “01/10/2020.” This UK-styled publication date means that the publication date of the Smith patent is the first (1) day in October (the tenth month) in the year 2020.
You note that the examiner’s rejection states that the Smith patent is “prior art” to your invention because the Smith patent was published before your patent application. However, you filed your patent application on April 1, 2020.
A proper reading of the Smith patent would show that Smith is not “prior” to your invention since you filed for your invention a full six months before the Smith patent was published. Therefore, the Smith patent must be removed as an “anticipating” reference since Smith is not prior art to your patent application filing.
Section 102 – Precautionary Steps
One way to achieve a timely and cost-effective resolution to seeking a patent is to engage a patent professional searching company to perform a prior art search.
1. Avoid submitting patent applications with claims that are not patentable and will be easily rejected.
2. Determine whether your invention is novel compared to public prior art.
3. Develop a strong patent claim strategy before you file your patent application (and reduce the chance of extensive amendments).
4. Account for close prior art when drafting your patent application. For example, you might want to describe advantages or improvements over the relevant prior art, as this can help persuade the patent office that your invention is “non-obvious.”
5. Understand how your idea fits into the technological field.
6. Be better prepared to discuss your invention with a patent examiner and explain what aspects of your work might be patentable.
A patent search will give you an idea about whether it even makes sense to pursue a patent in the first place. Unfortunately, patent searches do not come with guarantees. However, the goal of a patent search is to reach perhaps a 75-80% confidence threshold.
The prior art represented in patent applications filed for the first time within the last 18 months is not searchable because they are required by law to be kept secret. So a “no stone unturned” search is neither possible nor economically wise.
But a thorough search of what can be reasonably found leads to better decisions and a better-written patent application that considers the prior art.
Returning to our hypothetical rejection of the Smith reference, a basic search might have identified this reference. With this knowledge in hand, perhaps you would have crafted your patent claims to include already a patent claim limitation that is not taught by this reference, saving you both time and money.
Performing such a search will allow you to prepare and submit a higher-quality patent application since you now know what the patent Examiner may cite against your patent claims. This search will also allow you to familiarize yourself with the prior art that the examiner may use to reject your claims.
Finally, performing a prior art search is yet another method that will reduce the number of patent rejections you receive, reducing the overall costs of patent “prosecution.”
Another cost-effective pre-filing resource for low-budget patent filings is Project PQAI. Project PQAI is a collaborative initiative to build a common AI-based prior art search tool. PQAI stands for Patent Quality through Artificial Intelligence.
One of the advantages of PQAI is that it attempts to make the patent process more transparent for all involved and to significantly grow the number of inventors, thereby accelerating innovation while simultaneously improving the overall quality of patents.
Using PQAI and its AI-based searching algorithms, inventors can conduct cost-free searches of hundreds and thousands of potentially relevant references and reduce them to a best-of-prior-art collection in a top-10 results format. Additionally, providing you with a “top-10” search result format will save you the aggravation, time, and expense of refining and detailing your search queries over and over in an attempt to find the best prior art references.
Moreover, with PQAI, you are provided with a query mapping table. With such a table, you are provided with a first column that shows a part of the invention query and a second column that shows the relevant text from the search result. This mapping is not just word-to-word but highly contextual, unlike many other search results provided by third-party search firms.
A rejection under Section 103 of the Patent Act is the most often type of rejection that an Examiner will issue.
Combination of References
An Examiner may reject your patent claim based on Section 103 when your claimed invention is not identically disclosed, so the reference teachings must somehow be modified to meet the claims.
In our example, the Smith patent describes an orange juice maker that randomly selects oranges regardless of color, size, or another characteristic. We noted that in the Smith patent, there is simply no “selection of an orange.” And since your patent claim expressly recites “a mechanism for selecting an orange,” the Smith patent does not anticipate because Smith fails to disclose the important claim limitation.
In response to your claim modification, assume that the examiner issues a second Office Action and cites the Smith patent in combination with a second patent: the Jones patent. Specifically, in the Office Action, the examiner notes that the Smith patent might not expressly teach a “selection mechanism,” but the Jones patent makes up for the missing element. The examiner states that combining these two patents teaches all the elements of your orange juice-making machine and therefore issues an “obviousness rejection” of your claims.
You note that the Jones patent is generally directed to a method for making wine by squeezing grapes. However, in the Jones patent, a device is used to select a grape based on a grape’s characteristics. The examiner’s position is that a person with ordinary skill in the art would start with the teachings of the Smith patent and then make the modification as suggested by the Jones patent.
Therefore, your juice-making machine patent claim is “obvious” over the Smith and Jones patent combination for the examiner’s reasons.
Amend to Include Additional Claim Limitation
You can use many strategies to respond to the examiner’s “obviousness” rejection.
First, if the combination of the prior art shows all the elements of a particular claim, you can amend your claim to clarify a feature or add an element.
In the above example, you can add an additional element to the limitation of “a mechanism for squeezing the orange” and specify the mechanism’s structure like “a robotic hand for squeezing the orange.”
In conjunction with the claim amendment, you could argue that the combined Smith and Jones patents fail to show the new claimed combination. Then, the examiner may search the prior art further and find a third reference that discloses “a robotic handle.”
No Motivation to Combine References
Alternatively, you could argue that there would be no motivation to combine the Smith and Jones patents.
For example, if the Smith patent expressly states that certain features should be avoided (like the selection mechanism), there would be no motivation to combine the primary Smith patent with a secondary Jones Patent disclosing the very feature to be avoided.
One way to argue against the motivation to combine is to study the intended purpose of each prior art reference. For example, would the examiner’s combination go against the intended purpose of one or more prior art references?
The examiner’s reliance on 103 rejections has been slightly increasing over the last two-three years. For example, the graph provided below shows the percentage trend of 103 rejections issued by patent examiners:
Section 103 – Precautionary Steps
There is an almost 50% chance that the rejections you receive for your patent application are related to Section 103 of the Patent Act.
PQAI has an open-source search engine that can identify the combinational prior art. So, for example, if we were to input our hypothetical “orange juice” making machine as an idea query into PQAI, we would receive the first combination of results, which may have identified the Smith and Jones references described above.
Running your original “orange juice” making machine through PQAI once to look for potentially relevant combinational prior art allows you to identify potential roadblocks to you seeking a patent.
When you face a rejection of your invention, try to understand its basis and what is required to overcome them. However, it would help if you did not lose hope since you can make changes to address the typical rejections raised by the examiner.
The world is anxiously waiting for revolutionary change as Joe Biden, the 46th President of the United States, and Vice President Kamala Harris prepare to make history. Topics of interest focus on how the Biden-Harris administration will deal with the impacts and consequences of the nation’s intellectual property (IP) law and policies.
This article provides insight as major publications post comments and concerns about Biden’s IP policy approach. However, they each share perceptions that speak to the need to fortify U.S. IP protection as an incentive to continue developing inventions, technology innovations, and research patents to retain America’s lead in advancements.
U.S. businesses and inventors are concerned about how IP laws and policies could influence opportunities for supplying goods and services to support continued growth in commerce within the public and private market sectors. Therefore, president Biden’s plan needs to facilitate a more efficient patent filing process that secures and protects IP transfer and trading practices within domestic and international markets.
Overall, the community’s consensus sees the next four years highlighting the Biden-Harris administration’s effort to improve U.S. IP policies at home and abroad, contributing to America’s economic recovery.
The Diplomat – Contributing author Robert Farley commented on the influence that Vice President Kamala Harris brings to the table. Securing her position in U.S. history as Vice President, the post states how “Harris would influence both the executive branch policy and legislation while presiding over a closely divided Senate.”
As a sponsor of the DEFEND ACT during her tenure as Attorney General of California, Harris legally pursued producers in India and China for IP violations based on fair trade and law-abiding principles. In her current position as U.S. Vice President, there is no doubt that her influence will carry both inspiration and encouragement for patents filed in the United States.
The certainty of the Biden-Harris administration’s views on IP law and policies will focus on leveling the playing field for American enterprises and research organizations looking to gain a fair share of the supply markets.
Washington Post – Covering world business Jeanne Whalen reported on the Commerce Department nominee Gina Raimondo, pledging to join the fight against unfair trade practices. However, Raimondo did not share any details on how she planned to proceed – instead, Rhode Island’s governor said, “I believe America has to lead in standards-setting, particularly in new technology.” Raimondo continued, “It’s one way we could help Americans to compete, lead and win.”
China is the target in this article, charged with intellectual theft and misuse of patents with the intent to use stolen technology as a source to spy on other nations. Historically, the United States has held the number one position globally for filing the most international patents comprised of technological advancements, making it a primary target.
China misjudged the strength and resilience of the United States as a global competitor in the trade as U.S. enterprises continued to develop technology and venture into new research discoveries.
New York Times – Ana Swanson, who covers trade and international economics, reported on Rohde Island’s Governor, Gina Raimondo’s discussions on the Department of Commerce’s “Entity List” prohibiting companies from selling American products and technology to individual foreign firms without a license.
The Department of Commerce added the names of IP violators to the Entity List to protect America’s technology and business invention patents, allowing organizations to pursue open and fair markets actively. In addition, the Department pledged to continue its enforcement of foreign attempts at intellectual property theft and inappropriate (unlawful) acquisitions of patented data.
The article cites Raimondo’s praise by her peers for her public and private interest, dedication to dealing with the pandemic, increased investments in U.S. businesses, and promote marine and space economies.
Raimondo’s comments and the Department of Commerce’s actions to protect American intellectual property encourage new inventions and continued research advancements to drive the U.S. economy forward.
IPWatchdog – The article mentions the disarray in the U.S. patent process. Brian Pomper, Executive Director of the Innovation Alliance, sent a letter to President-elect Biden and Vice President-elect Harris outlining the need to support patent rights to meet enforcement challenges brought on by foreign competitors.
President Biden’s Plan for Rural America mentioned similar upsets of the U.S. patent process, declaring a recommended change on how patents are awarded. In one area pertaining to research, President Biden proposed that agricultural patents granted to private entities for inventions derived from publicly funded research deprive the public of duly earned benefits.
To protect the American people, “Biden encourages the U.S. to re-invest in land grants for universities’ agricultural research so the public, not private companies, would hold title to agricultural research patents.”
The Hill – Marc L. Busch, Karl F. Landegger Professor of International Business Diplomacy at the Walsh School of Foreign Service, Georgetown University, addressed two IP concerns associated with the forced-technology transfer through joint-venture and government subsidies funding research and development.
China was accused of forcing businesses to hand over their intellectual property to access their market. China then claimed the technology benefited from production and sale. Developing a legal partnership is a business strategy that allows the patent holder to sell or license the intellectual property rights to an authorized party for a specified duration and receipt of payment, royalties, or fees.
Busch suggested it may be a viable solution for new or existing patent holders to participate in secondary market spillovers as the concept offers economic benefits while spearheading new market patent developments.
SHRM – Society of Human Resource Management responded to an issue closer to home for U.S. employers and its workforce. President Biden’s platform included eliminating or at least minimizing employee non-compete clauses and no-poaching agreements.
Biden, specifically, said he would support federal legislation to eliminate most non-compete agreements – allowing only those necessary to protect a narrowly defined category of trade secrets.
Employer IP practices came into play as standard employment clauses and agreements to legally deter employees from sharing company information or competitors from soliciting employees to obtain trade secrets or data. However, over time, employment IP protection took on a broader role that interfered with workers’ rights to seek other employment in similar industries.
Employers could secure and protect patented investments by detailing the IP clauses and agreements to guard new technology, confidential information, trade secrets, inventions, or brand data.
A Quick Wrap Up
In summary, President Biden made two key points in his “Made in America” program; to provide incentives and support companies sourcing and manufacturing products within the United States and to protect U.S. patent rights by challenging attempts to steal American intellectual property.
Patent rejection statistics say: “The probability of failing at the patent office is much higher than that of receiving the patent.”
There are 88.6 % chances that you won’t get a patent on your invention.
“Your patent application is rejected!!” – No inventor wants to hear this!
But the hard truth is many inventors face rejection at the patent office. Either because their invention is not new or deemed obvious. The figure below shows patent rejection statistics for patent applications filed between 2017 – September 2020. 21.28% of rejections were because the invention was found non-novel or not new (102 Type). 46.95% of rejections were because the invention was found obvious due to a combination of two or more prior arts (103 Type).
Let’s Read The Inventor’s Mind
Is my idea new? Maybe.
I need to find out if someone has created a product like my invention.
Let me do a quick Google check.
…Search in progress…
After 15 minutes…
…No matching results were found!..
So cool, no one thought about it until now! Yayyyy!
Let me get a patent on my invention.
Hopefully, I can sell it for a good price $$$
Let me take some help from an I.P. community on the internet.
…after some Google search and help…
Yay! Patent application has been filed.
“Your patent application is rejected!!”
Oh No 🙁 all $$$ went to waste.
Would you apply for a patent if you knew there was an 88.6% chance you won’t get it?
Probably not. Alternatively, you would want to look for ways to succeed at the patent office! A few ways could be checking if:
Something similar to your invention already exists in the market.
Someone has already patented that invention.
Someone has described an invention like yours in public.
You would drop the patenting idea or refine your invention with all this information.
Finding this information could be challenging. In this post, we have shared a solution that can increase your chances of success at the patent office.
Before that, let’s look at the patent office’s data about the issuance rate.
Deepak Hegde, Associate Professor of Management at Yale University,
Dr. Alan Marco, Chief Economist at the USPTO, &
Michael Carley, Senior Data Analyst at T-Mobile.
The authors dived into the issuance rate at the USPTO.
Deepak et al. studied 2.15 million utility patent applications filed between 1996 and 2005 and examined them until June 30, 2013. The key highlight of their study is the continuous decline in allowance rate with each year.
In 1996 about 70% of patent applications turned to a patent which by 2005 fell to 40%.
urther, their study points out that the chances of a patent application getting granted in the first go – First-Action Allowance – is only 11.4%. In other words, there is an 88.6% chance that the examiners will reject a patent application at the USPTO.
You might be wondering what the first action allowance is. Don’t let the jargon bother you. The first-action allowance means the patent got granted in the first go itself.
To top it off, the situation is even worse for the inventors at small companies – companies with less than 500 employees. Their first-action allowance rate for inventors from small U.S. companies or individual inventors was only 9.3% during the period, while the inventors from large U.S. companies had a slightly better first-allowance rate of 10.7%. Their foreign counterparts fared well, however, due to a possible reason that they file only the most critical patent applications in the U.S.
Further, there is a considerable gap of 15.8% in the allowance rate between Large (75.3%) and Small corporations (59.5%) in the U.S. Another striking finding of the study is that the application filed by small inventors in the biomedical domain has bleak chances of receiving a grant.
Reasons For Rejection Of The Patent Application
One plausible reason for the high rejection rate is that inventors are unaware of the existing prior art. By prior art, we mean that an invention like yours exists. Either as a product in the market, a concept disclosed in a patent or a non-patent document. The patent rejections statistics where the popular rejection is USC 35 103 confirm this.
102 Type Rejection
The examiner gives 102 type rejections when he finds an exact prior art invalidating claims of a patent application.
103 Type Rejection
The examiner gives 103 type when he combines two or more references to prove an invention disclosed in a patent application as obvious.
Is It The Time To Rescue The Rescuer?
An increase in the number of rejections shoots up the time to get a patent and also the patent filing cost. This discourages small companies that don’t have a big budget, especially startups and individual inventors. To top it off, even if a patent is granted, its chances of making money remain slim.
One of the main reasons for the rejection is existing prior art that proves either the invention is ‘not new’ or ‘obvious.’ Hence, it’s time to equip inventors better to be successful at the patent office.
A Possible Solution
Thus, if there exists an intelligent tool capable of making an inventor aware of other solutions/references that already exist and could lead to his invention being deemed obvious or non-novel, he would be in a better position to make a go or no–go decision. In addition, he may share this detail with his attorney for a consultation, which may lead to a claim amendment before filing an application or other similar strategy.
Such an intelligent tool could have the capability to clear the cloud of uncertainty from the patent filing sky. In addition, it could facilitate well-informed data-backed patent filing strategies, which have the potential to bring down the patent prosecution cost, time, and the number of rejections.