Understanding Patent Rejections

What to do? How to face a rejection? The message I want to convey here is that there are almost always ways to deal with a rejection, even a final rejection. What is more, the main goal here is to understand that rejections, even the so-called final ones, are not necessarily all bad.

By Harry Du

By all means, rejections are disheartening.  We attorneys understand.  You spent weeks, maybe months or years, to perfect your invention. You sought the help of a patent professional to file an application, sometime with a hefty fee. You waited anxious for three years. And then, one morning, you get the message from the US Patent and Trademark Office that your application has been rejected. To make matters worse, you labored with the patent attorney to reply to the rejection, only finding out three months later that another rejection, this time with the horrible name FINAL rejection, was handed down.  What to do? How to face a rejection? The message I want to convey here is that there are almost always ways to deal with a rejection, even a final rejection. What is more, the main goal here is to understand that rejections, even the so-called final ones, are not necessarily all bad.

First, it is not at all uncommon to get a rejection. More than 75%, and in some technical areas almost 90%, of the patent applications are initially rejected. Why is the rate of rejection so high? To understand this you must understand the patent examination process. In a nutshell, inventors (and their lawyers) desire to get patents for monopoly protection for the invention. So the inventors want the patent to be as broad as possible. Examiners, on the other hand, represent the public to protect their rights against unfair monopolies. Thus, examiners want to make the patents as narrow as possible. Therefore, the inventors, with the aid of their lawyers, tend to write broad claims to get better coverage. Examiners push back by issuing a rejection. The goal of the examiner is to urge the inventor to narrow the claims, thus giving the public more space in intellectual property.  A rejection does not mean the invention is bad or worthless, it means that what the inventor asked for is more than the examiner is willing to give.

So it is not necessarily all bad to get a rejection—and the reverse is also true, it is not always so great to get a first time allowance. Maybe the allowance only suggests your claims are so narrow and the protection of the patent, even you get it, is not adequate.  When facing a rejection, Don’t panic, try to work with the patent attorney to understand the examiner’s argument and the references cited.  In most cases, counterarguments can be made and claims can be narrowed to rebut the rejection. Even a final rejection does not mean the end of an application. There are multiple approaches to deal with a final rejection, which is in some way a misnomer because it only partially limits the way you can reply to the rejection. In addition to arguing back, you can file for a RCE – Request for Continued Examination, file an appeal to the Board of Patent Interference and Appeal, or file a continuation patent application. These methods either move the case out of the examiner’s hands, or remove the “final” status and begin a new round of examination, giving you fresh chances to patent your invention.  The detailed strategies to deal with rejections, especially the final one, deserve several blog posts. However, it is always important to remember that there is almost always a way out.

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