Avoiding Patent Rejection

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How can a patent attorney avoid rejection from the Patent Office?

A majority of patent applications are rejected by the United States Patent and Trademark Office. Even the patents which are approved still receive at least one objection during the review process. Once your attorney receives an objection they have a chance to reply to the USPTO examiner and either amend your patent or explain why the examiner is wrong. After a couple rounds of objections the examiner will then approve your patent or issue a final rejection. There are a few kinds of objections and a skilled patent attorney can amend your patent application to satisfy the examiners at the USPTO.

The easiest way to receive an objection is to try and claim a patent for something unpatentable, like a law of physics, abstract idea, or anything found in nature. For example, when Samuel Morse patented Morse code, he also tried to claim he invented electromagnetism. However electromagnetism is a principle, not an invention, so his claim was rejected. Recently the United States Supreme Court also ruled that human genes are not patentable as well.

If the USPTO examiner does not believe your invention is novel he will reject your patent application. If your invention was previously patented you cannot receive a patent. Your attorney can amend your application to make it different from previous inventions but an identical invention will not receive patent protection. You application will also be rejected if you have disclosed your invention to the public, is for sale, or otherwise available to the public. Your attorney can help you determine if you have already disclosed your invention.

One of the most common objections to a patent application is obviousness. An invention is obvious when the difference between a claimed invention and prior inventions would be obvious so someone having ordinary skill in the art to which the claimed invention pertains. For example, if someone tries to claim a cell phone with a new capability the USPTO examiner will determine if the new capability is obvious to someone who designs or manufactures cell phones. Skilled patent attorneys can either amend your application or explain to the USPTO examiner why your invention is not obvious.

Another objection you may encounter is a restriction. If the USPTO examiner believes your application has more than one invention he will issue a restriction; patent applications are limited to one invention per application. You attorney can respond by either convincing the examiner there is not multiple inventions or by agreeing to strike the claims. The stricken claims can then be submitted as a separate application. Your attorney will most likely consult with you to recommend what would be the best course of action.

Finally, your patent application may be rejected if you did not include all of the necessary parts of your application, did not pay the proper fees, or otherwise follow a USPTO guideline improperly.  Many of these objections can be avoided by hiring a skilled patent attorney. If you have an interest in filing a patent application you can contact Stone Law at 732-444-6303 or contact us on our website.