The 2 Most Common Rejections of a Patent Application

Several months after your patent application has passed preliminary examination, the process of substantive examination will begin. During substantive patent examination, a patent examiner is assigned to review your application. The patent examiner will, among many other actions, assess your patent claims and perform a patent search based on your claims.

If the Examiner finds prior art (previous patents, applications, or publications) that is relevant to your claimed invention, he may issue one of two rejections: 1) a rejection indicating that your claimed invention is not novel in view of the prior art (this is known as a 35 USC 102 rejection); and/or 2) a rejection indicating that your claimed invention is obvious (non-inventive) in view of the prior art (this is known as a 35 USC 103 rejection).

The 102 rejection indicates that the Examiner found your entire claimed invention in a single reference. The 103 rejection indicates that the Examiner had to combine one or more references together in order to derive your claimed invention.

You should carefully review the references to ensure that the Examiner has both a proper understanding of your claimed invention, as well as a proper understanding of the cited reference. If you find room for disagreement, you may traverse (or argue) the Examiners rejections. In many instances, you are entitled to hold a telephonic interview with the Examiner. You’ll find the Examiner’s phone number on the last few pages of the rejection documents (or Office Action) sent from the Examiner.

Patent Examiner’s prefer that you fax or email them with an Agenda for the interview prior to scheduling the interview. The agenda’s do not need to be detailed, but the more detail you provide the Examiner with up-front, the better feedback you will receive from the Examiner.

It is not recommend that an applicant/inventor submit any official response to the Examiner in writing. Rather, any materials provided to the Examiner for the interview should clearly be marked “FOR INTERVIEW PURPOSES ONLY”, so that they do not get entered into the official record. The most common mistake inventors make is that they argue how their invention differs from the prior art cited against their patent claims. Instead, you should either argue how your CLAIMED invention (as described in the claims) differs from the prior art, or amend your claims so that they distinguish your invention from the prior art.

Conducting this interview is a good first step in assessing the status of your matter, but it is always recommended that you speak with a licensed patent attorney prior to proceeding with any formal response to the USPTO. Remember, anything you write in the formal response Can and Will be used to limit your patent rights! Even obvious characterizations can be construed to limit the scope of your patent rights!

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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