As we’ve mentioned previously, the U.S. Patent and Trademark Office initially rejects most utility patent applications. So, when the USPTO first examines your application, you can expect them to deny at least some of its claims for one reason or another. But you don’t have to guess what those reasons are – the USPTO will explain them in a formal communication called an “Office action.”
Rejections are not to be feared. A rigorous examination process helps ensure you end up with a valid patent, in compliance with the law and strengthened against potential future challenges. What’s more, a rejection can mean you simply asked for more rights than you can have, which helps you to define the outer limits and gain the broadest coverage possible. Without a rejection, you may not know how much more you *could* have asked for.
In an Office action, the Patent Examiner usually addresses each of the rejected claims in turn, making the case for why the claim won’t be allowed as it stands. The rejections, and the Examiner’s reasoning for them, are based on the USPTO’s rules and guidelines about what can be patented and what can’t.
Here’s a quick overview of the types of rejections and other items you might find in an Office action.
1. Prior Art Rejections – Your Claims Appear to Cover What’s Already Out There
Patents are only supposed to be granted for inventions that are “novel” and “non-obvious.” So if the Examiner believes that your claimed invention is too similar to what already exists, then your application will be rejected.
For patenting purposes, your invention is defined by the formal claims listed at the end of the application. The USPTO will only allow a claim if it describes something new – something that wasn’t public knowledge at the time your patent was filed. We refer to the body of knowledge already known to the public at the time your application was filed as the “prior art.”
Specifically, there are two ways a claim can be rejected over the prior art:
- Anticipation Rejections: Sometimes, the Examiner finds something in the prior art (such as an older patent) that meets every requirement in your claim. In that case, the prior art reference is said to “anticipate” your claim, and the claim is rejected for lacking novelty.
- Obviousness Rejections: Instead of finding a single prior art reference that anticipates your claim, the Examiner sometimes finds two or more references that could be combined together in an obvious way to meet all the requirements. Basically, this is the Examiner saying all the pieces were out there, and your claim just puts them together in a non-inventive way. In these cases, the claim is rejected as “obvious” in view of the prior art.
2. Subject-Matter Eligibility Rejections – We Simply Don’t Grant Patents for This Kind of Thing
In some cases, a patent claim can be rejected on the grounds that it’s attempting to cover subject matter that’s ineligible for patent protection, no matter how different it is from the prior art. For example, a claim that’s entirely about a law of nature, or a process performed in the human mind, is probably not eligible for patenting. You can include those kinds of things in a claim, but they can’t be the whole point of it.
3. Double-Patenting Rejections – You Already Have a Patent on This
Complicated legal concerns arise when more than one patent exists on the same invention. If you already have another patent or patent application on the same topic, your claims may be rejected for double patenting. This kind of rejection is usually simple to overcome, but it requires a thoughtful approach. We cover double-patenting rejections in more detail here.
4. Indefiniteness Rejections – We Can’t Tell What You Mean
As you may have noticed, patent claims are usually worded in a formal and nonintuitive way. This strange wording helps the claims meet certain legal requirements and best practices. These requirements and best practices ensure the claims are clear and unambiguous if they ever need to be interpreted in court. Unclear claims are rejected as indefinite.
5. Written Description and Enablement Rejections – You Didn’t Explain This Well Enough
A claim can be rejected if the rest of the application doesn’t adequately support it. The description and drawings you originally filed must describe your invention thoroughly enough to establish that you really did invent everything that’s claimed.
Furthermore, your description and drawings must include enough information to enable someone else to make and use the invention defined by the claims. That’s the tradeoff when you apply for a patent – in exchange for potential patent protection, you must publicly disclose how your invention works. (Your application will become public when the USPTO publishes it – we explain more about this here.) So if a claim includes things that aren’t described well enough in the application, it will be rejected.
6. Objections – You Have Some Errors to Correct
If your application has a relatively minor issue, like a typo in the claims or description, or drawings that don’t show everything they’re supposed to, the Office action may include an objection pointing out the problem.
7. Allowable Subject Matter – Good News: Some of the Claims Can Be Granted
In some cases, the Examiner rejects a few things, but also states that one or more of your claims include allowable subject matter. This means that at least one of your claims could be allowed as it stands, or if it’s combined with another claim, or maybe after addressing an objection or indefiniteness rejection.
The important thing to remember about Office actions is this: you can always respond to them. Even if they’re labeled as a “final” rejection. And it’s not a rejection of your application as a whole – it’s a rejection of one or more specific claims as they are presently worded.
When your patent firm receives an Office action related to your application, they will help you respond with arguments, clarifications to the claim language, or both. With the USPTO rejections as a guide, you can continue your pursuit for the broadest patent protection possible.
As always, if you have any questions, feel free to contact us.
Blog Post © 2021 Kolitch Romano LLP
Photo © 2020 Dave Bourgeau
Article by Erin Mondloch and Dave Bourgeau
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.