Things To Do When The Patent Examiner Rejects Your Patent

Filing your patent application is an exciting part of the process. But the chances of your patent being rejected will always loom large over your head. Thankfully, there are steps that you can take when the patent examiner rejects your patent.  

Dealing with your patent getting rejected is also a part of the process. In a Yale University study of over 2.15 million US patent applications from 1996 to mid-2013, more than 90% of them were rejected. So if you have filed a patent and it has been rejected, do not fret, you can argue against the examiner’s rejection and get things fixed. 

Before you go about arguing against the rejection, make sure that you know why your patent application has been rejected in the first place. When you understand the reason behind the rejection, you will be able to find a common ground and will also be in a position to seek the right kind of counsel. 

Who denies your patents?

The rejection or approval of patents happens at the patent office. Since there are a large number of patent applications that they receive, you should make it easy for the patent examiner to go through your application with ease. Ensure that your invention is patentable, unique, and non-obvious. Indulge in patent search to make sure that there is nothing similar to your invention. Give enough reasons for the patent examiner to approve your patent application. 

Why do patent requests get rejected? 

For your patent to be approved, it has to pass the patentability criteria. Below are some of the criteria.

Your invention is obvious- If your invention is not unique enough, then the chances of your application getting rejected is high. Your invention must at least be different from other inventions that are similar to yours. 

Poorly filled application- If your application is dotted with errors, you run the risk of getting your application rejected. Ensure that you follow all the guidelines that are to be met when drafting the application. To bring validity to your claims, add as much technical details as possible in a way that everyone can understand. 

Your invention is not novel- The invention for which you are seeking a patent should be the first of its kind. Before you file the application, it is wise to do a patent search to find the novelty of your invention. 

The importance of hiring a patent firm:

While there are a number of measures that you can take to increase the chances of your patent application being accepted, there is a crucial step that you can take to swing things in your favor. If you want a highly efficient solution, then it is wise to seek the expertise of a patent firm. They will not only help you in drafting the patent application, but will also be available throughout the entire process. A reputed intellectual property (IP) firm will have a team of experts who will help you wade through the process efficiently. 

 

Steps to take when the patent examiner rejects your patent:

  • Show why your invention is different:

There are chances that the patent examiner is misinterpreting the prior art incorrectly or too broadly. Or they may be applying the prior art references wrongly. What you can do in such a scenario is to argue how certain claim features are not found in the referenced prior arts. The examiner will then review your arguments, and two things can happen. 

  1. They can review your arguments, agree with them and find new references (or)
  2. Disagree with your arguments and maintain their stance on rejecting your patent. 

Here is what you can do in this scenario. Take the drawings that have been filed in the initial application and highlight a component or a processing step which isn’t shown in the records. You can ask the examiner-”Our invention has X, can you find X in the art of record?” 

  1. Adjust or modify your claims:

There are times when the examiner wants you to make the application easy to understand, so they would advise you to phrase your claims differently. If you make the changes that they have suggested, then the issue could be resolved. 

How you phrase your invention on your patent application has a huge impact. Using irregular terminology or slang is one reason why many patent applications get rejected. Having the advice of an experienced IP team will solve this issue as they are more careful while writing down your invention in the application and are better equipped to handle the entire process.  

  1. Show how your invention works:

There are times when the patent examiner gets back with a comment that reads-”Does the invention work?” 

Here’s what you need to do in this scenario. 

  1. Explain the landscape of relevant technology which existed before your invention.
  2. Explain how your device works.

One of the best ways to explain your invention clearly is to make a video where you outline everything about your invention. If you can schedule a direct meeting with the patent examiner, you can describe your invention directly. 

  1. Check if your patent application is complete:

The first thing that the patent office will review is your application and see if it includes all the necessary parts. To move your application to the next process, the examiner will even go through the technical aspects of your patent application. 

For your patent application to be complete, the following should be included:

  1. At least one patent claim
  2. Inventor’s oath or declaration
  3. Payment for filing the application
  4. Drawings to describe the invention, if necessary

If any of these are not met, the patent office will get back to you saying that you have submitted an ‘incomplete’ application. 

Conclusion:

Your objective should be to convince the patent examiner to allow your claims by modifying them and also by presenting your case properly. It may take a bunch of responses before you can find a middle ground and get your patent application approved. Do not worry about getting your patent rejected, you can make changes to address the objections raised by the examiner.

If you are looking for a one-stop IP solution, ResearchWire is more than happy to onboard you as a partner.When you are not sure about what to do when the patent examiner rejects your patent, get in touch with us- and we can help with next steps.

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Different Patent Classification Techniques: When to use What!!

Different Patent Classification Techniques: When to use What!!

Patent classification is the most important phase for analyzing different technological trends. Patents are classified according to different parameters or different technological features present. It is to be noted that a single patent may disclose more than one technological feature and therefore, a patent can be classified more than once.

A technology classification/taxonomy can be defined before the start of the classification process or a technology classification/taxonomy is built progressively as patents are classified one by one.

Depending upon the requirements and the scope of the project, different patent classification methods can be used to provide different insights into the patenting strategies and market dominance of one’s competitors.

  1. Class-based bucketing: Based on a pre-defined taxonomy (according to the technology sub-domains of the product/service line of the client), different relevant IPC/CPC classes are identified. This class-based classification is then replicated onto the extracted patent dataset, thus classifying the patents into various categories and sub-categories.

For example: Let us consider Wireless and Broadcast communication technology (broad category). Various relevant classes can be identified such as H04W and H04H, and then, on basis of the definitions of its various child classes, they are put into different buckets (based on the taxonomy) representing different sub-categories such as

H04W80/00: Wireless network protocols

H04W88/00: Devices for wireless networks

H04W40/00: Communication routing

H04H20/00: Arrangements for broadcast

H04H2201/00: Aspects of broadcast communication

Publications having these classes are hence bucketed. In Class-based bucketing, a patent may be bucketed multiple times into different categories. The accuracy achieved in class-based bucketing is moderate and the time required is less to moderate depending on the number of categories present in the taxonomy.

  1. String-based bucketing: Based on a pre-defined taxonomy, strings are formed for each of the sub-categories using keywords specific to that domain and their linguistic synonyms. By analyzing hits of the strings, the strings are refined to avoid any noise that may come. After a few iterations, the desired dataset for a sub-category of technology is obtained.

For example, The string for Wireless and Broadcast communication can be as follows:

ALL=(((wireless OR broadcast) NEAR5 communicat*) OR (wireless NEAR5 protocol*) OR ((antenna OR radio) NEAR3 construct*) OR (remote OR distant OR tele* OR online)) OR (Communicat* NEAR3 (rout* OR path)) OR ((frequency OR amplitude) NEAR3 modulat*) OR (transceiver OR receiver OR transmitter) OR (base station))

 

Though the strings are very specific, a small percentage of the publications might go undetected by the search algorithm of the database because of linguistic barriers (since translations of some of the non-English publications might not be available). Due to this, keywords+ class-based strings are formed, giving optimized and reliable results. Hence, the patent portfolio is classified into various categories. Its accuracy is slightly less than that of class-based bucketing, but the time needed to invest in it is the same.

 

  1. Manual Bucketing: Each patent in the dataset is analyzed thoroughly by experienced researchers. Depending on the type of invention and the key features that the publication discloses, it is classified into one of the categories, according to the pre-defined taxonomy or a taxonomy that gets build up during the manual analysis process. When compared with the above two methods of bucketing, manual bucketing has the highest accuracy (human intelligence being the contributing factor) as well as it takes most of the time.

 

  1. Automated Patent Classification using the NLP model: The adoption of NLP and AI-based auto-classification of patents has been sporadic. Automation for patent classification not only helps to reduce human error but also accelerates the classification process. Keywords and synonyms are identified pertaining to specific sub-categories (according to the pre-defined taxonomy) and are fed into the Natural Language Processing model for context analysis and lexical semantics to determine the central idea behind the invention. Hence classifying the patent portfolio into different categories. The accuracy achieved using such a model is moderate and the time required is less.

 

Choosing one of the above-mentioned classification methods depends on the size of the portfolio, the accuracy needed and the time allotted to the project along with the budget of the client for competitive benchmarking and hence the resources (number of people) allotted to the project are decided accordingly. In the case of highest accuracy, we need manual analysis as even NLP is not enough to do that. NLP can be used for a helicopter view of the overall portfolio.

Depending upon customer needs, At ResearchWire Knowledge Solutions, we follow a strong methodology and robust process to evaluate patent data and deliver what the client requires. ResearchWire Team consists of experienced Patent and Data Analysts who come from different industries. We understand the client requirements well and deliver useful insights using advanced data visualization tools to make the client’s decision-making process more effective and easier.

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Whitespace analysis: A smart step towards research, innovation and securing patent rights

Whitespace analysis: A smart step towards research, innovation and securing patent rights

How to find whitespaces

Recently during a client discussion about White space analysis where it was pointed that in his technology domain, not many companies file for the patents. Therefore, it is inaccurate to find whitespaces just by analyzing patent data set.

So, the question was, what could be the smart way to find whitespaces in such cases.

Before jumping straight to the answer, let’s look at what the whitespace analysis actually is and how is it important for any company or organization to capture the market ahead of their competitors.

Whitespace analysis helps to identify overcrowded and sparse areas in a technology domain. It helps in identifying new opportunities for innovation in less competitive areas.

How to go about the whitespace analysis         

For any whitespace analysis, a scope is defined in terms of what is expected from the whitespace analysis. For e.g. whitespaces can be identified in terms of

Technology,

Applications,

Material, etc.

Similarly, many other parameters can be selected. After the scope is defined, relevant patents are identified using combination of keywords and classes. All the patents are analyzed then according to parameters defined. Patent classification is done according to different methods. Generally, after the classification is done, the areas with a smaller number of patent filings are considered as whitespaces.

But this approach may not give a full-proof idea about the whitespaces due to many reasons

  1. It is not necessary that company files for patent in a particular technology domain
  2. It may happen that technology is old enough and therefore the patents could not be captured into the dataset due to date restriction.

Therefore, a 360-degree analysis is needed to shortlist the whitespaces. Apart from the patents, it is important to look into the Non-patent literature which includes both the research papers and products available in the market for the related technology domain.

To answer the client’s question, we suggested that Whitespaces can’t be decided on the basis of the number of filed patents only. The inclusion of other literature is also necessary such as existing products, research work, etc. in the technology domain.

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