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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How to file a patent in a few easy steps

Inventions have the power to change the world. 

A simple example would be the patent named “Navigation system using satellites and passive ranging techniques,” or the GPS. 

Can you imagine traveling these days without the help of a GPS system on your smart phones? 

When an invention is protected and the inventor stands to gain from it, that acts as an inspiration for every inventor out there to do more. That’s why protecting your invention is important. 

Getting your invention patented is the best way to protect your invention from others. If you have heard about how difficult it is to file a patent, then you probably are right. There are a lot of things that need to fall in place for you to get your invention patented. Thankfully, the entire process can be broken down, and thus becomes less complex than it actually is. 

 

Let us look at how you can file a patent in a few easy steps:

 

#1 Have a deep understanding of your invention:

The first step towards getting your patent is to ensure that you know your product inside out. What part of the invention makes it unique and useful? Once you are clearly aware of what makes your invention worthy of getting a patent, the next step is to consider the scope. You need to find out if there are other ways to invent your product. Write down all the other ways of making your invention work, even if they are not the most ideal way to do it. 

You need to find if your invention has a broader application. If that’s the case, then you need to do more modifications to narrow it down. Doing all of this will ensure that you will be able to protect and will also benefit from being aware of the full scope of the invention. Your patent application will be tighter and more likely to be approved by the patent office.

 

#2 Keep a record of how you came up with the idea:

Make sure to keep a record of how you arrived at the idea and the step-by-step process that you took to come to this stage. A written record like this can actually help your case if you face any issues and it even helps bolster the creative process. Write down everything, from the changes you made, corrections, mistakes, and even the slightest line of action. 

Keep records of who has been given access to your idea. Ensure that all of these people have signed a Non-Disclosure Agreement (NDA) which specifically states that the rights to your idea and their work on your idea are all yours. Hire a patent firm and make sure that you get the NDA drafted by their lawyer so that there are no loopholes which might eventually come to bite you. 

 

#3 Does your invention qualify for patent protection?

Ideas cannot be patented. Everyone knows that. So if you want to protect your invention, you need to show the patent office how exactly it works. For an invention to be patentable, it must be new, non-obvious, and useful. 

New means that the invention cannot be known, used, described or patented before the filing date of your patent application. 

Non-obvious means that the invention should be significantly different from similar inventions which are already known. 

Useful means that the invention is useful, as in, a chemical, mechanical or electronic invention. 

 

#4 Patent Search:

Doing a patent search will help you figure out if your invention is new. Searching for prior patents and going through previously published patent  applications will assist you in understanding if the patent is patentable. While a patent search isn’t really a must, it will help you determine the proper scope for the patent application. 

If you plan to do patent search by yourself, we will advise you against it as it requires technical expertise and complex tools that only an IP firm will have. Do remember that the patent office will conduct its own search after you file your patent application. 

 

#5 How do you want to protect your invention? 

File a provisional patent application at first. This offers you protection in case someone says that they had the idea before you did. You can even take a year after this to file your patent application. During this period, you can add claims to strengthen the prototype that you have built, but you cannot add anything new. 

Let’s say you have added a piece of technology or something that adds more firepower to your invention, then you need to file a new patent application to add them. 

There are three main types of patents: Utility, Design and Plant patents. You have to figure out the right patent type for your idea. 

Utility patent- It is an exclusive right that is granted to an invention which doesn’t allow anyone else to profit from the invention without the inventor’s permission. 

Design patent- This type of patent is usually granted if the product has a unique configuration, unique surface ornamentation, or both. 

Plant patent- This patent protects a new and unique plant’s key attributes from being copied, sold or used by others. 

 

#6 Write your patent application:

You need to prepare a specification that also includes an abstract, summary, background, detailed description, conclusion, the scope and so on. Patent applications are a complex affair if you are doing it by yourself. They have several parts, and each of these can be rejected for many reasons. Ensure that you double and triple check what you have added in your patent application before sending it. A mistake might end up costing you a lot of money, more importantly, a lot of time too. Drafting the right patent application requires a lot of practice and technical know-how. It is strongly recommended to hire an IP firm to take care of your patent application. 

 

#7 Wait for the patent examiner’s response:

For your patent application to be processed, it takes at least one to three years. Make sure you get your application right the first time itself as you do not want to find that your application has been rejected owing to mistakes that could have been avoided. One patent examiner will be assigned to your invention and if you ever receive any communication from them, ensure that you respond to it immediately. 

If you have an attorney, the patent office will reach out directly to them. You can also get things expedited by arranging an interview with the patent examiner. It will help clarify the concerns they have about your invention, if any. 

During this period of time when you are waiting for a response from the patent office, make sure you are working on the business side of things. Since your patent is pending and the invention is protected, you can still talk business to interested parties. 

 

#8 “Notice of Allowance”:

The patent office will issue a “Notice of Allowance” if you are going to receive the patent. After you pay the required Issue Fee, you will receive your patent approximately after one to three months.  Once your patent is granted, your invention or design will be protected anywhere from 14 to 20 years, depending on the patent that has been granted. 

After you receive the patent, make sure you keep the patent alive by paying the maintenance fees. 

 

Conclusion:

Above are the steps using which you can file the patent easily. Unless you are 100% sure that you can handle the patent application process because you have dealt with it earlier, do not do it by yourself. If you still plan to do it by yourself, make sure you scrutinize each and every point that you add with excruciating detail and thoroughness. There cannot be any lapse because that would mean that the patent office will get back with a rejection. It can be a terrible cycle if you do not get the application right in the beginning itself. 

Get in touch with Researchwire’s patent experts who will help you with filing your patent application if you have an invention that you think deserves formal protection. 

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