(of a bad or harmful act) intentional; deliberate.
“willful acts of damage”
There was a time courts treated willful infringement simply as an act of intentionally copying a patented invention. The onus was on the plaintiff to present convincing and clear evidence of an obvious infringement. Things changed; the alleged infringer now 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 enhancement of damages up to three times in case infringement is proved.
You can no longer ignore the infringement notice; it would be considered as 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 extremely resource heavy. It will drain your enterprise of time, energy and of course, money. It might be worth depending on what’s at stake.
If you, after weighing all considerations, believe that an out of court settlement works better for you, there won’t be any need to respond to the notice. Make sure that your settlement agreement is air-tight when it comes to court claims against you though.
If you do choose to go down the legal route through courts, you must reply to the notice.
Check Patent Strength
Wonder if there’s a quick and effective way to help you decide the route? A tool that helps you gauge the strength of the patent without even employing your IP team? The IP resources should be saved to look into the matter only if the subject patent appears real strong.
Imagine a search tool that can access any technical information out there – patent as well as non-patent literature. A search tool that has the most advanced algorithm to find you only the most relevant results. To top it all – conducting search on such a platform is a piece of cake. Sounds unbelievable?
We hear you, however it’s possible to create such a tool with the advances in AI capability to interpret the patent language. In fact 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.”.
At the moment, PQAI is far from perfect 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. A few months ago, we identified some IPR cases 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 that was 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 was duly issued in full compliance with
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 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….
Well 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 we can get in making this initiative a success. You could be part of this revolution by funding the development of the tool. In return, you will give to yourself, and the world at large 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 rejections! 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. After fine tuning your invention, you assist your patent professional with drafting your patent application, toiling to put together the perfect words to describe your invention. Your patent drawings are detailed and meticulous. After investing hours going over every word of your patent claims, you file your patent application. Now, after years of waiting, you receive a notice from the Patent Office rejecting your invention. Time to give up?
No. First, there are a number of resources that can assist you with understanding what the rejection is and how you might be able to overcome this rejection. We will identify various resources that can assist you. Reliance on these resources can be important since you might have a limited patent prosecution budget. Also, it is likely that not only will you receive a first rejection (i.e., a first Office Action), but is also very likely that you will also receive a second rejection (i.e., a second Office Action) in the same application. For example, according to a recent study by the US Patent Office, the average number of Office Actions that a patent examiner will prepare per issued utility patent where the patent finally issued in fiscal year 2019 was 1.7. That is, on average, every patent that was issued in 2019 received at least one office action rejecting the patent claims.
Second, once you receive a rejection of your invention, you are typically offered an opportunity to amend your application. You can also argue against the Examiner’s rejections. However, before you can make these types of arguments, you must have an understanding as to WHY the patent examiner has rejected your patent. Such an understanding will allow you to engage the Patent Office in an effort to find some common ground in order for you to earn your patent. Such an understanding will also allow you to seek assistance with overcoming this rejection and perhaps taking certain precautionary steps so as to avoid the same rejection pitfalls in the future. Finally, we will identify certain precautionary steps that will assist you in overcoming these rejections, not only for the same patent application, but also for your future patent filings.
Patent Rejections Are Common
Patent rejections are very common. According to a recent study at Yale University, almost 90% of all patent applications receive some type of patent claim rejection. So, you are not alone. There is also hope since 60% of all patent applications will eventually (after an initial rejection) issue as a patent. So, do not lose hope since the rejection that you received from the Patent Office is not a death knell to your invention. Rather, a rejection is just the beginning of a process of negotiation with the patent office. In this post we discuss both: precautionary measures you can take to avoid rejections as well as measures to take after receiving a (non-final) rejection.
Initial Precautionary Measures
There are a number of initial precautionary measures that you might want to consider before you file your patent application. For example, one way to achieve a timely, cost effective resolution to seeking a patent is to hire a knowledgeable patent attorney before you begin to prepare your patent application. A patent attorney will prepare your patent application for the rigors that it will experience during a patent examiner’s review. Once the application is filed, the patent attorney will work with the Patent Office to marshal your invention forward so that your application will hopefully eventually mature as an issued patent. Engaging a knowledgeable patent attorney will reduce the number of patent rejections that you receive, reducing the overall costs of patent “prosecution.” In addition, your patent attorney will also hopefully expedite the process to eventually receiving an issued patent from the patent office.
Precautionary Measures While Drafting Utility Patent Applications
The utility application accounts for the majority of applications that are filed in the US Patent Office and therefore will be the primary focus of the present article. For example, according to recent statistics published by the US Patent Office, the Patent Office received roughly 621,000 utility applications in 2019. (https://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm)
Let’s understand the main components of utility patent applications and how can those be best presented in the application. 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 all the elements of your invention. The written description may include a description of how to make those elements, how to assemble those elements, and how to use the elements of the invention. The written description explains what is illustrated in the figures and what the invention is as expressed by the words of the claims. For example, the detailed explanation may include certain descriptors or headings such as the title of the invention, the technical area of the invention, background of the invention, a list of included drawings, and most importantly an in-depth, detailed description of your invention.
One precautionary step that you might consider in order to avoid rejections based on your detailed description is to verify that all of the elements and components that you describe in your detailed description appear somewhere in your figures. This also relates to any process or method steps. Make sure each process or method step explained in your specification appears somewhere in one or more of your figures or drawings.
Conversely, you should also confirm that all of the elements appearing in your figures are described or explained somewhere in our detailed description. Also, when preparing the detailed specification understand that one purpose of the detailed description is that it should provide an understanding to a person of “ordinary” (not extraordinary) skill in the art on how to use and understand your invention. So, if you think something should not be included in the detailed specification because you think everyone might already know how to perform a certain function, that is not the test. If in doubt, include it in your detailed description. This will help others understand your invention, and it may even help the Examiner when he or she reads your patent application.
The drawings should illustrate all of the components parts of your invention as explained in your detailed description and as recited in the claims. Similarly, each element identified in your drawings should be mentioned in your detailed description. Drawings should be included to understand your invention and must be included with your original patent application filing.
One precautionary step that you might want to consider in order to avoid rejections based on your patent figures is to engage a professional draftsperson to prepare your drawings. As they say, drawings may be worth a thousand words so it typically pays to get this portion of your patent application correct. For patent drawings, like the words of your patent claims and like the words of your detailed specification, there are a set of rules and requirements that must be followed with your patent submission. Those drafting professionals that prepare patent drawings are typically experts when it comes to these set of rules. A true professional has a solid grasp on these patent regulatory norms but also a sufficient amount of artistic skills as professional patent illustrators and that can create patent drawings that are acceptable to the respective patent office. Moreover, not only do they have the artistic skills, they are also typically well acquainted with computer design software. Now, there are many types of software and computer systems that enable a professional draftsperson to create error-free patent drawings. For utility applications, a typical draftsperson will charge about $30-50 per figure and for design patent drawings, about $40-60 per figure. Of course, the complexity of your invention or the length of your application may require a higher charge.
The last few paragraphs of your application are the patent claims. These are the most important part of your application because they define the legal boundary of your invention. Your patent claims are different from your detailed description. For example, your patent claims may be amended during your correspondence with the patent office. In contrast, aside from amending typographical errors and the like, you cannot substantively amend your detailed description. And, you cannot add new subject matter to your detailed description after you file your application.
The patent claims of your patent application define exactly the limits of what your filed patent application does and does not attempt to cover (i.e., the “scope” of your invention). As the owner of your patent, you have the right to exclude others from making, using or selling, only those items or things that are adequately described in your patent claims. Because of the importance of the claims, your patent claims will receive the most amount of scrutiny from the patent Examiner.
Filing Broad Patent Claims
The patent claims are prepared as the last few paragraphs of your patent application. There are many strategic reasons 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. However, your broad claims must not cover what was known before you filed your patent application (i.e., the prior art). Therefore, if you file broad claims, your broad claims will typically receive the most amount of rejections from your patent examiner.
Filing Narrow Patent Claims
Alternatively, you may file narrow claims that try to capture only a narrow subset of technology. For example, you may file a narrow “picture” claim that captures each and every technical aspect of a preferred design or application as it is illustrated in your patent application. However, narrow patent claims could allow your competitors to avoid or “design around” your patent claims, giving competitors an opportunity to use your invention without technically violating your patent claims. However, narrow claims typically will receive a lesser amount of rejections from your patent examiner. As such, by submitting narrow claims, you may receive your patent earlier from the patent office.
Patent Office Review
All three components of the Utility Application can receive “objections” or “rejections.” As such, the Examiner can also take issue with your detailed description and/or the figures. The key here to understand is that most, if not all patent application objections and/rejections can be overcome with changes made to your patent application detailed description, the figures, and/or the patent claims.
One of the first things that the Patent Office will review is to see if you filed a complete application that includes all the necessary application parts. After receiving an application, the Patent Office will review the patent application for completeness. In order for your application to be complete and move on to the prosecution process where the Examiner will begin to scrutinize the actual technical substance of your patent application, your application must be complete.
A complete application includes:
at least one patent claim,
an inventor’s oath or declaration,
payment of the required governmental 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 his or her legal name;
identify the patent application;
include a statement that the person executing the oath or declaration believes the named inventor to be the original inventor of a claimed invention in the application for which the oath or declaration is being submitted; and
state that the application was made or authorized to be made by the person executing the oath or declaration.
If you file your application and your application papers do not include the inventor’s oath or declaration, or requisite fees, the Patent Office will send you a notice that you have submitted an “incomplete” application and that you are being required to provide the missing information. If you receive one of these notices it is imperative that you respond 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 you file your complete application, your application will be assigned to one of the many Technology Centers at the Patent Office. The Technology Center will review the application papers to determine what technical or group art unit the application should be assigned to. Once the Technology Center identifies the proper technical subject matter of your invention, it will assign your patent application to a group of Examiners who have experience with the technology related to your invention.
Patent Examiner Review
A typical patent application will undergo multiple levels of review by the Examiner during his or her substantive examination of an application. 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 primarily four types of rejections are applicable.
For example, an initial examination next step in the patent application review process is for the Examiner to review your application for a potential restriction requirement. 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 separate use). The Examiner will determine if your patent claims are trying to capture more than one invention. The theory here is that examination would be too time consuming and burdensome for the Examiner to search for more than one invention when the fees that you paid when you filed your application only paid for the Patent Office to perform a single prior art search, not multiple searches for multiple inventions.
For example, let’s say you submit a patent application that is directed to a new idea for making orange juice. Your patent application includes a number of patent claims. Specifically, your patent application includes a first patent claim that is generally directed to your orange juice making machine and includes the following elements:
1. a mechanism for selecting an orange,
2. a mechanism for squeezing the orange,
3. a collection device for collecting the orange juice, and
4. a disposing device for disposing the now empty orange peel.
Your patent claims also include a claim that is generally directed to your method of making the orange juice and includes the following four steps:
1. selecting an orange,
2. squeezing the selected orange,
3. collecting the juice from the squeezed orange, and
4. disposing of the empty orange peel.
As you have 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 may require that you “restrict” your proposed patent claims to proceed with selecting either your orange juice machine related claim or your orange juice making method claims.
By selecting one claim over the other claim, you are not sacrificing the unselected claim. For example, if you opt to pursue your orange juice making machine of claim 1, you will not be sacrificing your method claims. You can file what is called a “divisional” patent application to seek protection of your unselected method claim set.
Once you have successfully narrowed your application down to a single invention, the Examiner will move onto the substantive examination phase. During the examination phase, the Examiner may issue formality rejections and these are generally related to Sections 101 and 112 of the Patent Act. For example, as noted in the graph provided below, the 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. Again, as noted in the graph provided above, rejections based on Section 102 account for roughly 21% of all rejections whereas rejections based on Section 103 account for roughly 47% of all rejections.
So, let’s take a quick look at each of these rejections and why the Examiner might issue such a rejection. After discussing the substance of the rejection, we will identify certain precautionary measures you might use to avoid receiving these types of rejections in your current patent application as well as potential future patent applications that you might file.
Section 101 Rejections
Rejections according to Section 101 relate to the idea of “double patenting.” A patent is a government grant that gives you the 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 for obvious variations of your invention.
There are two kinds of double patenting: one based on the law and the other based on a question of obviousness. First, there is “statutory” double patenting which prevents you from having two patents with the same invention. The prohibition against statutory double patenting arises from the Patent Act, which states that an inventor can “obtain a patent.” Because double patenting requires the same claim in two patents, a statutory double patenting rejection is relatively easy to avoid and is fairly uncommon.
The second type of Section 101 rejection occurs much more frequently. “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. A copy of this form can be found here.
Patentable Subject Matter
When the Examiner reviews your patent application, the Examiner will ensure that your application meets the legal requirements for patentability. This 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.” If your invention is not a process, machine, manufacture, or composition of matter, your invention is not patentable because your invention is not the right type of invention and will therefore be rejected.
While most inventions fall within one of these categories, some inventions do not. 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.” Pure data (meaning data claimed alone as opposed to data residing on a computer or data being manipulated during a computer process) is also unpatentable and will be rejected.
If your invention is going to be patentable, your invention must also avoid falling under a judicially created “exception” to patentable subject matter. While the articulation of these exceptions has varied over the years, what is clear is that abstract ideas, laws of nature, and natural phenomenon are exceptions to statutory subject matter. Inventions that are 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 important 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. (https://www.ipwatchdog.com/2019/08/13/update-101-rejections-uspto-prospects-computer-related-applications-continue-improve-post-guidance/id=112132/)
If your application has received a Section 101 rejection, that means the Examiner believes that your claims relate to a type of invention that is ineligible for patent protection. There are really two different types of Section 101 rejections. First, either the Examiner is saying that your invention does not fall within one of the four statutory categories. Or second, the Examiner is saying that your invention falls under one of the patent ineligible exceptions (which is usually either an abstract idea or a natural law/phenomenon). In either case, such a rejection does not have to be the end of your patent application, although the rejection can sometimes be difficult to overcome a Section 101 rejection.
Section 101 Precautionary Steps
As a precautionary measure, you may consider reviewing your claims before you file with the patent office with an eye towards a potential 101 rejection. In most cases, these types of 101 rejections can be overcome 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 having certain 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 revise 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, claims to “machine-readable media” include both physical computer memory and transitory electromagnetic waves. These claims should be revised to remove the possibility of the claims covering subject matter that falls outside the four statutory classes.
Section 102 – Novelty of Invention
Prior art rejections are the most common rejections issued by US Patent Examiners. For example, as noted in the graph reproduced below, almost 70% of all rejections issued by Examiners are based on some prior art that is used to reject patent claims.
In order to obtain a patent on your invention, one of the legal requirements is that your claimed invention (i.e., the one defined by your patent claims) must be “new” or “novel.” In other words, you must be the first inventor to have invented your invention before anyone else. So, there can be no prior invention before you filed your patent application. A prior invention is typically something that was publicly known or publicly available before your invention.
These are very common rejections. Indeed, roughly 21% of all Examiner rejections are related to novelty rejections under Section 102 of the Patent Act. So, one of the more common rejections is that the Examiner will say that your patent claim is not novel or is not new because someone somewhere was the first to practice or teach your invention. They were the first to invent your invention. You were the second to come up with this invention. Therefore, your patent claims will be rejected.
For example, returning to our sample claim, let’s assume that you have decided to pursue your orange juice making machine invention. The Examiner will review your claim and then search through the prior art in effort to determine if he or she 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 the orange juice, and
4. a disposing device for disposing the now empty orange peel.
The Examiner will search available sources (e.g., granted patents, scholarly publications, industry publications, etc.) in order 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, on-line databases, website, or internet publications. If the Examiner identifies prior art that he or she believes shows an orange juice making machine including all four machine elements that are recited above, your claims will be rejected as lacking “novelty.” Basically, the Examiner is saying that your invention is not “new” or “novel.”
One Reference Showing All Elements
Patent novelty, therefore, refers to the uniqueness of your invention. Your invention will be novel if no single prior art reference discloses all the elements that form your claimed invention. So, 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 its 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 each and every element of your claimed invention.
Another important issue is that the printed information that the Patent Examiner is relying upon must be “prior” to your invention. That is, the printed information must bear a publication date that is earlier or “prior“ to your filing date. If the date of the cited information is not earlier than your filing date, the cited information is not “prior art” and therefore must be removed from the Examiner’s analysis.
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: 1. a mechanism for selecting an orange, 2. a mechanism for squeezing the orange, 3. a collection device for collecting the orange juice, and 4. a disposing device for disposing of the empty orange peel.
Now 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 is lacking novelty over a patent published in the United Kingdom and 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 a review of the Smith patent, you recognize that, yes the Smith patent is generally directed to an orange juice machine. However, you recognize that the Smith patent does not teach any type of mechanism that allows for the selection of one orange over another orange prior to the orange being squeezed.
As you describe in your detailed explanation of your patent application, one of the advantages of your invention is that the selection of an orange is based on the size, the color, or some other characteristic of the orange. 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 the color, the size, or some other characteristic of the orange. 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 does to disclose at least the noted important limitation of your patent claims.
Since anticipation requires that all of the elements in your claim must be found in a single prior art printed document, you can argue to the Examiner that the Smith patent does not “anticipate” because Smith lacks a teaching of some type of 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, have support for 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.
As one example, you could amend your “selection mechanism” claim limitation to now read: “a mechanism for selecting an orange based on a characteristic of the orange.” (claim clarification shown in underline). The amendment would further distinguish your claimed invention from that taught by Smith’s patent.
Reference Must Be Prior Invention
Another important 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. If the date of the cited information is not earlier than your filing date, the information is not a “prior” invention since the information was published after your invention. And since the cited information is not “prior art,” the cited information cannot be considered by the Examiner since the information cannot anticipate your invention since the information was not “before.”
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 UK or European type documents, you note that the Smith patent uses a European date format. That is, 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.” Well, 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. The date does not mean that the publication date of the Smith patent is January (the first month) 10, 2020.
However, 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. But your patent application was filed 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 on October 1, 2020, and not January 10, 2020. 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
If you do not have a budget to hire a patent attorney, another way to achieve a timely, and cost effective resolution to seeking a patent is to engage a patent professional searching company to perform prior art search. There are many prior art search firms and companies that perform these types of searches. A typical prior art search typically costs on the order of about $300-500 for a typical mechanical invention. There are a number of benefits to performing a precursory prior art search, one conducted before expending the time and resources to prepare and submit a patent application for review by the Patent Office. For example, the benefits of conducting a preliminary prior art search include:
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 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.
Basically, 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% level of confidence threshold. To reach a higher confidence level would take thousands of dollars, and to reach near certainty would require many thousands of dollars, so the search that is undertaken is reasonable given the value of the invention. It is also reasonable given that the prior art represented in patent applications filed for the first time within the last 18 months are simply not searchable because they are required by law to be kept secret. So a “no stone unturned” search is not possible and not economically wise. But a thorough search of what can be reasonably found leads to better decisions and always leads to a better written patent application that takes into account the prior art. Without knowing what is in the prior art, there is simply no way to accentuate what is most likely unique in comparison to the prior art. In other words, without a search you are describing your invention in a vacuum. Indeed, returning to our hypothetic rejection over the Smith reference, perhaps a basic search would have identified this reference. With this knowledge in hand, perhaps you would have crafted your patent claims to already include a patent claim limitation that is not taught by this reference, saving you both time and money.
If you do not have a budget to fund a third party prior art search, you can perform your own patent search which will allow you to gain a better understanding of the prior art. For example, there are multiple resources that can assist you with this basic search including at least the following: Google Patents, USPTO search interface, Espace (European Patent Office), WIPO search interface etc. There are a few more free search tools available. 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 will also allow you to familiarize yourself with certain prior art that the Examiner may use in rejecting your claims. Performing a prior art search is yet another method that will reduce the number of patent rejections that 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 the pace of innovation while simultaneously improving the overall quality of patents. By using PQAI and its AI based searching algorithms, cost free searches of hundreds and thousands of potentially relevant references can be reduced to a best of prior-art collection in a top-10 results format. By providing you with a “top-10” search result format, this 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 it is 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 in order to meet the claims.
Recall from our example that the Smith patent describes an orange juice maker that randomly selects oranges, irrespective of the color, the size, or some other characteristic of the orange. We already 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 simply fails to disclose the important claim limitation.
In response to your claim modification, lets say 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. Now, the Examiner states that the combination of these two patents teaches all of the elements of your orange juice making machine and therefore issues an “obviousness rejection” of your claims.
In our hypothetical, you note that the Jones patent is generally directed to a method for making wine from squeezing grapes. In the Jones patent, a device is used to select a grape based on a characteristic of a grape. The Examiner’s position, therefore, is that a person having 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, the Examiner reasons, your juice making machine patent claim is “obvious” over the combination of the Smith patent and the Jones patent.
Amend to Include Additional Claim Limitation
There are many strategies that you can use to respond to the Examiner’s “obviousness” rejection. A few of the more frequently used strategies are mentioned below.
First, if the combination of prior art really does show all the elements of a particular claim, you can amend your claim to clarify a feature or to add an element. In the above example, you can add a further element to the limitation of “a mechanism for squeezing the orange” and further specify the structure of the mechanism like, “a robotic hand for squeezing the orange.” In conjunction with the claim amendment, you could argue that the combined Smith and Jones patents altogether fail to show the new claimed combination. Of course, 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 together as suggested by the Examiner. For example, if the Smith patent expressly states that certain features should be avoided (like the use of 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. 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
As noted in the graph provided above, there is almost a 50% chance that the rejections you receive for your patent application is related to Section 103 of the Patent Act. As such, you should consider utilizing PQAI which will help you identify the combinational prior-art that could be cited as the basis for a 103 type rejection. PQAI has an open-source search engine that has the capability to identify the combinational prior art. For example, if we were to input our hypothetical “orange juice” making machine as an idea query into PQAI, we would receive a first combination of results, which may have identified the Smith and Jones references, as described above. As such, running your original “orange juice” making machine thought PQAI once to look for potentially relevant combinational prior art thereby allowing you to identify potential roadblocks to you seeking a patent. Once these potential roadblocks are identified, you can draft your patent claims accordingly to avoid such potential 103 rejections.
When faced with a rejection of your invention, you must try to understand the basis for the rejections and what is required to overcome these rejections. You should not lose hope since changes can be made 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 some insight as publications post comments and concerns about Biden’s IP policy approach. 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. Looking in from the outside, 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 goes on to state 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 to 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. Raimondo did not share any details on how she planned to proceed – instead, Rhode Island’s Governor made this statement, “I believe America has to lead in standards-setting, particularly in new technology.” Raimondo continued saying, “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 targeted.
China misjudged the strength and resilience of the United States as a global competitor in trade as U.S. enterprises continue to develop technology and venture into new research discovery.
New York Times – Ana Swanson 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. The Department pledged to continue its enforcement of foreign attempts of 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, dedicated to dealing with the pandemic, increase 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 encourages new inventions and continued research advancements in an effort 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.
Similar upsets of the U.S. patent process were mentioned in President Biden’s Plan for Rural America, declaring a recommended change on how patents are awarded. 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 grant 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 benefiting from the 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 that are 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. 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.
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% rejections were because the invention was found non-novel or not new (102 Type). 46.95% 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 check on google.
……. Search in progress……..
After 15 minutes……
…….No matching results 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 $$$$
Let me take some help from an IP community on the internet.
……after some googling and help……
Yay! Patent application filed.
“Your patent application is rejected!!”
Oh No :(, all $$$$ went for a waste.
Would you apply for a patent if you knew that there are 88.6% chances that 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.
With all this information either you would drop the idea of patenting or refine your invention.
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 take a look at the data about issuance rate at the patent office.
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 until June 30, 2013. The key highlight of their study is the continuous decline in allowance rate with each year.
In 1996 about 70% patent applications turned to a patent which by 2005 fell to 40%.
Further, their study points out that the chances of a patent application to get pogranted in the first go – First-Action Allowance – is only 11.4%. In other words, there are 88.6% chances that a patent application will be rejected by the examiners at the USPTO.
You might be wondering what’s the first action allowance? 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 US companies or individual inventors was only 9.3% during the period while the inventors from large US 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 most important patent applications in the US.
Further, there is a considerable gap of 15.8% in the allowance rate between Large (75.3%) and Small corporations (59.5%) in the US. 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 not aware of the existing prior art. By prior art we mean that the invention like yours exists. Either as a product in the market or as a concept disclosed in a patent or in a non-patent document. The patent rejections statistics where the popular rejection is USC 35 103 confirms 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?
Increase in number of rejections shoot up the time to get a patent and also the patent filing cost. This discourages small companies, and especially startups and individual inventors that don’t have a big budget. To top it off, even if a patent is granted, its chances to make money remains slim.
Thus, if there exists a smart tool that is capable of making an inventor aware of other solutions/references that already exist and could lead to his invention deemed obvious or non-novel, he would be in a better position to make a go or no–go decision. He may share this detail with his attorney for consultation which may lead to a claim amendment before filing an application or other similar strategy.
Such an intelligent tool could have capability to clear the cloud of uncertainty from the patent filing sky. It could facilitate well-informed data backed patent filing strategies which have potential to bring down the patent prosecution cost, time, and number of rejection.