It is very uncommon for a patent application to be allowed to issue as a patent in the first action from the U.S. Patent and Trademark Office after filing. It is far more likely that some or all of the claims in a patent application will be rejected by the patent examiner in the first round of prosecution. But even though most patent applications will receive a first office action rejection, more than half of all patent applications filed will eventually become issued patents. Below is a brief explanation of the five of the most common classifications of patent rejections.
Rejections Made Under 35 USC 112
Rejections made under 35 USC 112 are directed to formality issues concerning the form of the claims and whether the specification requirements are satisfied (i.e., written description, enablement, and best mode).
Rejections Made Under 35 USC 101
Patents are only available for inventions that are considered to be patentable subject matter specifically provided for under 35 USC 101, which includes:
When an invention is directed to abstract ideas, laws of nature, or a natural phenomenon, then the application will be rejected under 35 USC101.
One type of double patenting rejection could also be made under 35 USC 101, which asserts that the invention recited in the claims of the application is identical to the claims of another patent that already exists.
Rejections Made Under 35 USC 102
In addition to other criteria, an invention must be new in order to be patentable. Under 35 U.S.C. 102, the invention must be novel, meaning it does not already exist in the world. A rejection under 35 USC 102 means that the patent examiner identified prior art that anticipates the claimed invention.
Rejections Made Under 35 USC 103
In addition to other criteria, an invention must be nonobvious. Under 35 U.S.C. 103, the invention cannot be obvious to a person having ordinary skill in the art. A rejection under 35 USC 103 means that the patent examiner has identified a prior art reference or references that, in light of their disclosure, teachings, or suggestions, it would have been obvious to a person having ordinary skill in the art to have conceive and produce the claimed invention.
Double Patenting Rejections
Double patenting rejections exist in two varieties: the statutory double patenting as discussed above concerning 35 USC 101 rejections, and non-statutory type double patenting rejections. Non-statutory double patenting rejections are generally based on prior art references with claims that are similar to the pending patent application but are not exactly the same. The claims are so similar that allowing the claims in the present application would unfairly extend the duration of protection that that invention has been given.
How A Patent Attorney Can Help
Getting a rejection from the Patent Office can be frustrating, but it is an important part of patent prosecution. A patent attorney can work with you to overcome the rejections in your application by amending the claims, specification, and/or drawings; conducting an interview with the examiner; or submitting a terminal disclaimer (if appropriate, and in line with your intellectual property strategy).
If you have questions about why your patent application was rejected by the Patent Office, contact Parsons & Goltry at patentsavers.com, or call 480-991-3435.
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"I applied for a patent through Parsons & Goltry. After being on the docket for 2 years at the USPTO, I received notification that my patent request had been denied. Michael Goltry contacted me immediately to review my options. After I informed him of my decision to move forward, he filed a response to the USPTO. In his response he got the examiner to fully understand the claims in the patent application and the "denied" decision was reversed. I was able to secure and receive a "patent granted" decision. Thank you, Michael Goltry."
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