The Three Common Rejections

Three Most Common Rejections and Objections of Patents

Hi, I'm Rich Beem. I'm a patent attorney and I would like to talk with you about the three most common rejections and objections that are stated by patent examiners after your patent application is filed.

The number one rejection that examiners like the very best is when they say there is no novelty here. There is nothing new about your invention. Someone else did exactly the same thing. And there's another word for that. They call it anticipation. They say that this other reference anticipates your patent application and, therefore, your claims are rejected.

The second rejection that is very common, and it goes along with the first one, is obviousness. The examiner says you know, even if there is a little bit that is new about your patent application, it doesn't really amount to very much. It's obvious. It would have been obvious to one of ordinary skill in the art to make your invention. If somebody knew about what else happened in the prior art and the examiner will cite what they call prior art references, then it would have been obvious to them to come up with exactly what you did. And if your patent is obvious then it will not be allowed to issue. And even if it did issue, it would be invalid. So the examiner says you can't have your patent. That's the second rejection.

Now, the third most common thing that happens when an examiner looks at your patent application is they object, not reject but object, to technicalities. They say the claims are not in the right form. The say the drawings have words on them instead of reference numerals. They say you don't have the right headings. You don't have the paragraphs numbered properly. There's lots of details and technicalities that go into a patent application, and those are particularly common when someone drafts and files their own patent application, which is permitted. We encounter technical objections too, even in the applications that we prepare as patent attorneys. But we're very skilled in knowing how to deal with those technicalities and how to correct the technicalities.

Now, what's the most important thing about these rejections and objections? At the end of the office action the examiner will say that there is a period of time, and it's normally three months, in which the applicant, and that's us as your patent attorneys. We're acting for you. We will file in writing with the patent office a response to the office action and we will explain that contrary to the examiner's initial impression, there really is something new about your invention. And contrary to the examiner's initial impression it's really not so obvious as it seems after we explain it to the examiner. And as to the technicalities, we correct those. And so what we hope to get in the second office action is a notice of allowance and issue fee due, which means that your patent is going to issue.

Another thing that occurs during this process is we often pick up the phone and call the examiner. We interview the examiner, and we negotiate. We explain what it is that's special about your invention, all in order to get a notice of allowance to get your patent to issue.

And I explain this because I want you to know what's involved in the process and I also would like you to understand that it's very important what goes into that patent application from day one. I like to do what I call front loading the process. I want to front load that patent application with all the details. I want to put in all the drawings, all the sketches, all the descriptions. I want to put in the ranges, I want to put in the parameters to help the examiner to understand what's special about your invention and to get not just claims allowed, but to get the best, broadest claims allowed, what we call commiserate with the scope of your invention.

So when you have an invention and you want to file a patent application, call me. I'm at 312-201-0011. Thank you for joining me.