What if My Patent Is Rejected?

Rich Goldstein

Founder & Principal Patent Attorney
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It can be easy to take a patent rejection personally. You believe in an idea so much that you have submitted a patent application, only for the Examiner to turn it down. While it is disheartening, it’s something most inventors, including myself, experience, with an estimated 86% to 90% of all patent applications being rejected by the USPTO.

If you’re disappointed because your patent has been rejected, do not despair, as I am here to explain your next steps. In today’s article, I will guide you through the main reasons patents get rejected, how many times they can be rejected, how you should respond to a rejection, and much more. 

What If My Patent Is Rejected?

If your patent is rejected, you have a few options:

  • You can appeal the decision by the Examiner
  • You can amend your application 
  • You can provide additional arguments or evidence to address the reasons for rejection.

It’s essential to work with a patent attorney or agent to navigate the process and increase your chances of obtaining a granted patent.

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How To Respond to a Patent Rejection

When a patent is first rejected, it is known as a nonfinal Office Action. The difficulties and cost of a response depend on various factors:

  • Does the Office Action include a Section 101 rejection? 
  • How many prior art references are cited?
  • Is the Office Action citing rejections for both Section 102 (anticipation) and Section 103 (obviousness)?

Submitting a Fresh Patent Application With Novel Content

In certain situations, adding more content can help expand claimable features. In such cases, you might opt for a CIP application, either instead of or alongside an Office Action response.

The benefits of a new patent application with added content are:

  • Enhanced Protection – A new patent application allows you to claim additional features and improvements, providing broader protection for your invention.
  • Avoids Limitations – By filing a new application, you may avoid the limitations imposed by amendments or arguments made during the prosecution of the original application.
  • Fresh Examination – The new application undergoes a fresh examination, potentially benefiting from different perspectives and potentially avoiding rejections from the previous application.

The potential drawbacks include:

  • Additional Costs – Filing a new application incurs additional costs, including application fees and attorney fees.
  • Time-Consuming – Preparing and prosecuting a new application takes time, potentially delaying the granting of patent protection compared to addressing an Office Action promptly.
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Communicating With the Patent Examiner Regarding Your Rejected Patent

Before submitting a written response, it is recommended to discuss matters with the Examiner, especially if they do not understand the concept of the invention. 

Seasoned patent attorneys, especially ex-USPTO Examiners, understand how to communicate effectively with Examiners. Pre-filing an interview allows insights into persuasive claim amendments and arguments for the Office Action response. Even knowing what won’t work can be valuable in guiding the response effort.

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Common Grounds for Patent Application Rejections: 5 Key Reasons

You’ve put together a potent patent application, filed it, and waited to hear back for what seems like an eternity only to receive a rejection from the patent office. The good news is that most failed United States patent applications can be resolved via communications and negotiations with the Examiner. 

Let’s explore the five main reasons why patents are rejected:

Lack of Novelty 

The law that regulates the approval of patents in the US is United States Code Title 35. The most common reasons for patent rejections at the USPTO are linked to prior art under specific sections 102 (lack of anticipation or novelty) and 103 (the invention is too obvious).

One of the main requirements for obtaining a patent is that the invention or idea is novel, meaning it must be new and not already known or publicly disclosed before the filing date of the patent application. If the patent office finds prior art (existing publications, patents, or other disclosures) that describes the same invention or a very similar one, the application is likely to be rejected for lack of novelty.

Obviousness 

As well as being novel, inventions should be non-obvious to those skilled in the relevant field or sector. A patent Examiner may determine the invention to be a mere obvious modification or combination of prior art. In such cases, the patent application would usually be rejected due to obviousness or a lack of inventiveness.

Nowadays, rejections under Section 101 of the patent law have become more common. This section defines what types of inventions are eligible for patents. Some terms, like “abstract idea,” lack clear definitions, leading to ambiguity in the law. As a result, patent applications may be rejected due to this uncertainty, creating challenges for both patent attorneys and Examiners.

Act of God

The third reason for patent application rejection can be down to an “Act of God.” This refers to changes in patent laws and landmark court decisions that can impact a patent application. In the past, patent law was more stable; however, significant cases like Bilski, Alice, and others brought uncertainty. 

You can’t predict future legal changes, which can lead to rejections despite following the rules during drafting. Such unpredictable legal circumstances are the third reason for patent application rejections.

Non-Patentable Subject Matter

You may think that all inventions are patentable, but this simply is not the case. Certain subject matters are often excluded by patent laws, including laws of nature, abstract ideas, natural phenomena, mathematical formulas, and methods of doing business without a practical application.

If an invention is categorized under any of these excluded subject matters, the patent application might be rejected for being ineligible for patent protection.

Prior Public Use or Disclosure

Remember, almost 90% of all patent applications are rejected at least once. This isn’t the final straw, however; it simply means the application undergoes a series of examination steps where you, the inventor, need to discuss it with an Examiner. 

Patents are typically only granted to products that have not yet been disclosed to the public before the patent application was filed. If you, as the inventor, used the invention or disclosed it publicly before submitting the patent application, it can be considered prior art, resulting in likely rejection. 

What is the Limit on Patent Application Rejections?

When it comes to utility patents, the application can be rejected multiple times. However, even if an inventor receives a few Office Actions, it doesn’t mean the patent will never be granted. 

In such scenarios, the Examiner may search for new prior art to issue second rejections, which is quite common. If this happens to you, examine the claim rejections with a patent attorney and put together your next response. In some cases, these steps may need to be repeated several times. 

In time, you can either appeal or dismiss the application. You can also file a CIP application and abandon the application altogether. Then, you can introduce additional content to potentially enhance the patentability of your claimed invention.

Additional Questions 

What to Do After The Final Rejection of a Patent? 

What you do after the final rejection of a patent can be important for obtaining a patent in the future. You have a few options – you can decide to Request for Continued Examination (RCE), submit an Amendment After Final (AAF), file an After Final Consideration Pilot (AFCP), and/or appeal

Can You Reapply for a Patent?

Yes, you can reapply for a patent if your previous application was abandoned, rejected, or if you want to pursue additional improvements or features. Reapplying allows you to present the invention under different terms or conditions and undergo a fresh examination process. 

However, it’s essential to address any reasons for rejection or abandonment in the new application to increase the chances of success.

Conclusion 

If your patent has been rejected, it does not mean it will never be granted. Many patents that are in place likely went through multiple rejections before being granted. Do not feel disheartened, as it’s a step most inventors have to suffer.

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