After filing a full non-provisional patent application to request 20 years of patent rights, it must be examined by the US Patent Office (USPTO) who will determine whether you are eligible for a patent. It is very possible to receive a preliminary rejection, what we call an office action. So what are the reasons why patents get rejected?
Reason 1: The invention not being novel
For a patent application to be approved, it must be considered novel, nonobvious, and useful by the patent examiner from the US Patent Office. These three criteria, known as the patentability criteria, is a subjective determination. In other words, whether your invention is considered novel, nonobvious and useful is based on the opinion of your assigned examiner. Your invention not being considered novel is the first likely reason for rejection of your patent application.
If the invention for which patent rights are claimed is not actually the first of its kind, as in it lacks novelty, the patent examiner may reject based on the patentability critiera. If the examiner is able to find another existing invention or product that was invented before yours, and is the same as yours, then your invention is not novel and may be rejected. The examiner will send the rejection letter, we call “office action” and cite the previous invention or product, we call “prior art”, as the reason for rejection.
Because it is important to apply for a patent application on a novel invention, it is recommended to perform a patent search prior to applying for a patent application. A patent search may be able to find that your invention already exists and is not novel, before you decide to apply for the patent application.
If you receive an office action for the reason of your invention not being novel, you may have a patent professional prepare response arguments to the examiner to argue for approval. Most of the time, the examiner is unable to find a previous invention (prior art) that is completely identical to your invention. Therefore, we would argue that your invention is different from the examiner cited prior art and that your invention is in fact, novel.
Reason 2: The invention being obvious
The second common reason for patent application rejection is based on the second patentability criteria, the criteria of needing to be “nonobvious”. Remember, not only must your invention be considered novel, it must be novel in a nonobvious way as determined in the subject opinion of the Patent Office examiner. Put simply, the examiner must consider your invention to be unique enough from the prior art.
To reduce the chances of being considered obvious and receiving an office action, you would want to make sure your invention is as unique as possible from anything else that is already out there. The more unique your invention is and the more features and distinctions it has compared to what is already out there, the higher the chances the examiner will consider your invention nonobvious, and eligible for a patent.
If you do receive an office action for being considered obvious to the examiner found prior art, you could still have a patent professional prepare response arguments to the examiner to argue for approval. We would argue that because your invention has certain features and components that are not disclosed in the examiner cited prior art, your invention should be considered nonobvious, instead of obvious, and therefore eligible for a patent.
Reason 3: Patent application improperly written
The third common reason for receiving an office action is due to errors in the patent application. There are two types of common errors.
First, there are what we call informalities where certain minor rules and procedures of the patent application are missed. These could be:
- Issues with paragraph numbers, line numbers, component numbers, reference numbers on drawings
- Grammatical or punctuation issues
- Improper use of syntax such as using ‘the’ when it should ‘a’ to reference a component
- Exceeding word count on the abstract, or missing abstract
Informalities can usually be fixed and are considered minor issues the examiner wants to be corrected.
Second, you could receive a rejection if your patent application was insufficiently written where there is not enough detail about how your invention works. This is usually an issue that cannot be easily fixed.
One important concept in patenting is that to apply for a patent, you must disclose exactly and completely how to make your invention. Without what we call full disclosure of your invention, it is impossible for the Patent Office to determine if your invention is indeed patentable. Therefore, a full technical description of every component in your invention and the arrangement of those components must be disclosed in the patent application. The issue is that most individuals who have never drafted patent applications before do not know the proper language and disclose the invention as required by the patent office. Properly drafting a patent application requires technical knowledge, the knowledge to understand the invention and how it works, along with legal knowledge, the knowledge to know what wording and syntax to use. The biggest problem is that once a patent application is drafted, it cannot be amended to add in new information. So, if a patent application is written with insufficient disclosure and the patent examiner rejects for this reason, it is not possible to add in more details to the patent application at that time to fill in the missing information. Therefore, it is important to have the patent application properly drafted and when initially filed.
If your patent application receives an rejection for insufficient information, it is likely a second patent application, called a child application may need to be filed, to address the missing information in the original application.
Has your patent application received an office action rejection? Let us know and get a quote for a response by a patent professional.