Back to: Navigating the Patent System
Was there a mistake in the preparation or filing of my patent application if there is a rejection or notice to correct the formalities of the patent application?
No, it is likely just a normal part of the patent process.
A rejection or notice to correct informalities does not indicate that a mistake exists in the patent application. In fact, many patent applications are rejected for not meeting formal and/or informal requirements. Rejections can be rendered even after a formal patent search has been conducted and no prior art reference has been found that anticipates the invention. It could have been that the patent search failed to find the most relevant prior art reference, which was then found by the examiner. Even in this situation, there is not necessarily a mistake in the patent application. As explained in Chapter 3, a novelty search does not guarantee that a patent application will mature into an official patent but merely indicate the likelihood of a result.
What are the most common office action rejections?
Novelty and non-obviousness
The most common, substantive rejections in an office action are related to novelty and “non-obviousness.”64 Other substantive requirements include, but are not limited to, written description and enablement, but those will not be discussed in great length here.65 Novelty requires that the invention be new and not already in existence. If the invention is not new, the United States government has no incentive to award a patent for it. The public already has access to the information held by the inventor. Non- obviousness requires that an invention be more than a mere, obvious variant of existing technology. An invention that is an obvious variant is, by definition, likely to be introduced by someone else to the public. The United States government has no incentive to award a patent for an obvious invention because it would otherwise, inevitably become known to the public. If your invention is non-obvious, the public benefits from it only by the inventor’s public disclosure of it. Granting patents is meant to motivate inventors to disclose novel and non-obvious inventions to the public.
Why is my invention being rejected, especially if it is more advanced than the cited prior art?
It is all about the claims!
The invention is being rejected because the claimed invention, not the disclosure (i.e., the entire specification, including both the text and drawings in the application), is not novel compared to the prior art. The claimed invention is defined only by that which is in the Claim Set. Only the claims are considered when rejecting an invention. The invention may be more advanced than the prior art, but the claims may be written so broadly as to encompass prior art references cited by the examiner and therefore not considered to be novel.
An examiner attempts to find a single document (i.e., primary art reference) that teaches all the elements or limitations recited in a claim. If one reference cannot be found that discloses all limitations of the claimed invention, the examiner may combine other documents (i.e., secondary references) and argue that the claimed invention is an obvious variant of the primary reference. That is, an examiner asserts that a person of ordinary skill in the art would have been motivated to modify the primary reference in conjunction with the secondary reference(s) to come up with the claimed invention.
Why is the examiner rejecting the claims based on unrelated prior art?
The Broadest Reasonable Interpretation (BRI) standard gives the examiner considerable leeway to determine analogous prior art.
It may appear that the examiner is rejecting the claimed invention based on prior art that seems irrelevant to the claimed invention. However, the examiner is most likely making a reasonable rejection. Under the BRI standard, the examiner can interpret every word written in a claim with the broadest reasonable interpretation. For example, a “foot support” for a human-powered vehicle could be a pedal or a skateboard deck. When an examiner searches through prior art, even if the invention is directed to a skateboard, the examiner may be searching prior art related to bicycles, tricycles, and other wheeled vehicles because they too include what could be considered a “foot support. The concept of the broadest reasonable interpretation gives the examiner great leeway in construing the claims. Unless an applicant appeals the examiner’s interpretation to the Patent, Trademark, and Appeal Board (PTAB), they should amend the language of the claims so that the language of the claims does not allow the examiner to interpret the claims so broadly.
In sum, the BRI standard significantly broadens the possible scope of the claimed invention during patent prosecution for examination purposes so that the examiner can consequently use what appears to be unrelated prior art to reject the claimed invention. An examiner could therefore reject the claim based on technology that is wholly unrelated to the invention. For example, an examiner may utilize prior art references related to fake concrete in rejecting an invention directed to technology for real concrete. The inventor may erroneously feel as if the examiner does not understand the invention or believe the patent application was written incorrectly because the legal definition of the prior art is much broader than what the inventor usually feels is analogous or related.
A reference can be used to reject an invention for obviousness if it is analogous art.66 A reference is an analogous art to the claimed invention if: (1) the references are from the same field of endeavor as the claimed invention (even if it addresses a different problem), or (2) the references are reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor at the claimed invention). To have the reference withdrawn as prior art, the applicant could argue that the reference is non-analogous prior art based on the definition given above. However, in practice, even if the cited prior art is non-analogous, it is hard to convince the examiner to withdraw a reference for being non-analogous prior art.
It would be usually easier to argue that a non-analogous reference contains information that a person of ordinary skill in the art (e.g., real concrete) would be taught away from using or implementing the teachings in the art that are non-analogous (e.g., fake concrete reference), making the invention non-obvious. Non-obviousness arguments are easier to make and are stronger arguments for patentability than arguing that the reference is non-analogous art.
The patent application has been rejected on substantive grounds. Should I give up on the process?
It depends… how is the invention doing in the marketplace?
The decision to end the patent examination process is a hard one and is dictated by many different factors such as whether the invention is doing well in the marketplace and whether the arguments for patentability are strong.
If the invention is not doing well in the marketplace, the likelihood of the patent application maturing into a patent probably does not matter. In such cases, the costs and effort associated with the patent examination process should probably be abandoned to minimize legal costs. If the invention is doing very well in the marketplace, the likelihood that the patent application will mature into a patent is moot as well. The inventor must continue with the examination process because the patent application provides the only vehicle by which an inventor can block others, including large companies that are well-funded and have extensive marketing networks in the marketplace. The patent application equalizes such inequalities between startup businesses and large companies. Deciding to abandon the patent process is harder if the invention’s performance in the marketplace is mediocre because discontinuing the patent process may mean giving up on the business
If the arguments for patentability are weak based on the prior art references and the examiner’s rejection, it may be time to consider giving up on the examination process to mitigate the legal costs. However, all options should be analyzed before doing so because all patent rights could be irreversibly dedicated to the public upon abandonment and the inventor may lose the ability to secure a patent.
64. See Chapter 10 for information on other substantive requirements such as the Written Description and Enablement requirements
65. 35 U.S.C. § 103 (See Appendix F)
66. Another way for protecting cornerstone technology is to approach the patent application process with a kitchen sink mentality. This means that the patent application will include everything about the cornerstone technology and all other bells and whistles and features peripheral to the cornerstone technology. The idea is that this omnibus patent application, over the course of many continuing applications, would have claims directed to different parts of the cornerstone technology, its peripheral features, and its benefits that would be submitted for examination in order to build a patent portfolio that protects both the cornerstone technology and its peripheral features