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.
The benefits of conducting a preliminary prior art search include the following:
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.
If you do not have a budget to fund a third-party prior art search, you can perform your patent search to understand the prior art better. For example, multiple resources can assist you with this basic search, including the following: Google Patents, USPTO search interface, Espace (European Patent Office), WIPO search interface, etc. In addition, 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 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.
The best part is that inventors who are not skilled with core patent search skills can also perform prior art searches using PQAI.
Section 103 – Obviousness of Invention
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.
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 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.
Once you identify these potential roadblocks, you can draft your patent claims accordingly to avoid such potential 103 rejections.
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.