The chances of predicting uncertainty in your own patent application is often difficult and hard to believe. In the case of IP industry, the inventor puts all of his/her efforts to create and finalize the patent application. But still, not all become successful in getting a patent registered in their name. Rejections can never be positive, until and unless you are a fifth grader. Therefore, it is better to understand the reasons why your patent application gets rejected by the patent examiner. By this you will get to know what’s left uncertain or improper that could be improved in future applications.
Sometimes, due to lack of knowledge and experience, patent inventors often get confused of what does rejection actually means. However, a denial from a patent examiner is certainly not the end of the story. For new filers, it is hard to understand that the USPTO and the patent office give a number of chances to the patent filers to make modifications in their patent application. When the application first gets rejected, an office action is issued in which the patent inventor is required to make changes and submit the application again for checking. This can take place a number of times (may be two or three), depending upon the performance of the inventor and willingness of patent examiner for that particular invention.
At last, a final rejection is issued, known as the final office action that gives the inventor to make changes to the application, the one very last time. But, hope must not be lost and even after the final office action response, there are a number of things that can be done to continue to attempt to proceed and finally satisfy the patent examiner’s requirements. But, what’s the point of continuous efforts, if at last your application has to face disappointment. Well, this makes it more curious to know the reasons why your patent application gets rejected.
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Why Your Patent Application Gets Rejected?
Most of the patent application gets rejected, due to the following reasons:
- Due to inappropriate Claims: The most important aspect of any patent application is its claims section, since it defines the scope of patent protection. Once the patent application gets submitted to the patent office for examination, the patent examiner goes through the complete patent application and then conducts a prior art search for the claimed invention, to check whether the claims are novel, useful, and non-obvious. Giving a serious concern towards all the additional references provided by the applicant and the results of the prior art search, the complete application is tested on the basis of patentability parameters. As per the law (U.S. Code, §35), if one or more claims are not satisfying the patentability pre-requisites, the patent examiner will reject the application.
Once a rejection has been made, an office action is sanctioned that includes complete details of all the ambiguous areas of improvement, which can be further enhanced by the patent applicant, conveyed through the office action response. This provides opportunities to the applicant to put and place more evidences that can prove the novelty of his/her work, giving extra time for a better application; otherwise provide responses at the earliest time possible. The examiner then reviews all the evidence, amendments to the claims, and arguments responsive to any rejection before issuing the next Office action.
Another important point of confusion is that applicants might believe that when the patent examiner rejects the claims, their invention gets rejected. It is important to learn that an invention can never be rejected; it is the claims that get rejected.
- Due to Objections for Claims: Rejection and Objection must not be confused with each other. When the claims become inefficient when any of these could not be proved, such as its utility, novelty, obviousness, or proper description, it is called rejection. Whereas when its form is improper, an objection is made. The Patent Trial and Appeal Board, is responsible for reviewing the correctness of the application if any rejection is filed. Whereas, in case of an abjection, the application can only be reviewed by way of petition to the Director of the USPTO. An easy way to understand this is for patentability aspects, a rejection is given and when the application is unable to satisfy the examiner due to its form, an objection is given. Thus, objections are easier to be corrected while rejections can be a bit trickier to overcome.
- Due to inefficient Prior art: Once the patent application is submitted to the patent office for its examination, its validity is checked with the past references of same or similar domain, which is also called prior art search. There are two factors which are generally tested, such as novelty of the invention and its non-obviousness.
In the prior art search, search is conducted to find out one or more significant resources that matches (are identical, according to U.S. Code 102, §35) with your invention. If in case anything matches, then your patent application will no longer be considered novel, and will be rejected. This can be handled if you choose to argue or amend your inputs to the patent application. If no single prior art reference identically describes each and every aspect of your invention, then you probably are, good to go.
If in the prior art search, the patent examiner views a number of references, pull every bit and piece of information that matches so that they can determine is all the pieces, parts and functionality of your invention is non-obvious. According to U.S. Code 103, §35, it is must that the combination of the pieces, parts and functionality found within the area of your invention would not become equivalent to mere act that in any way portrays “common sense”. If it is determined to be within the possession of one of ordinary skill in the art the claimed subject matter will be rejected as being obvious. Again you can either argue or amend the application.
- Due to getting failed in meeting the patent examiner’s requirements: If the applicant fails to meet the requirements of the patent examiner through all of his/her office action responses, a Final Office Action is sanctioned by the patent examiner. This gives one last and final opportunity to the applicant to either argue for the correctness or amend the patent application. Most commonly, the second office action is the final office action, after which if all the requirements are unable to satisfy the examiner, the application will be finally rejected.
After the final office action is given, the patent examiner expects all the amendments to rewrite dependent claims into independent format or cancel claims. , Any amendment that will place the application either in condition for allowance or in better form for appeal may be entered. Personal interviews with the patent examiner after the final rejection, is only allowed in very special cases. So even after final rejection there is still opportunity to work with the patent examiner to some limited extent, and you can certainly always appeal.
Also, you can file a RCE (Request for Continued Examination), according to the 37 CFR 1.114. It can be filed at any time after the prosecution gets closed. You can file an RCE if you think that your information is correct to make an appeal, or after receiving the final office rejection to give another chance. This will give you a fresh round of prosecution with the patent examiner, which means two more Office actions to convince the patent examiner that your claims (or amended claims) are entitled to be issued.