You’ve spent years refining your invention. You have carefully nursed it from a fragment of an idea into a refined, fully conceived product. It’s marketable, and you’re dealing with the final details while you wait for the Patent Office to sign off on your patent application. And then… the USPTO sends you an ‘Office action’ stating that they are rejecting your application for a patent. Now what?
If you have received a rejection and you’re truly uncertain what to do, we can help. Contact us to schedule a consultation.
But generally speaking, you have to understand that the patent examiner in question isn’t being excessively critical or hostile towards your invention. Roughly 85% of the time, patent applications are rejected on the first pass. This is because patent examiners are keenly aware of the questions that can crop up down the line and undermine a patent’s viability. While the nature of these questions varies according to context, they boil down into the following four questions:
Did Congress intend for this invention to be patentable?
Under Section 101 of the Patent Act (which comprises Title 35 of the U.S. Code), only certain types of inventions can be patented. These include physical machines, processes, compositions of matter (e.g. chemicals, drug formulations), articles of manufacture, or improvements on the above. This list of items is exclusive—things that are not on it can’t be patented. This means things like abstract ideas, laws of nature, and items that occur naturally are unpatentable (this last example is why genes occurring in a human or other living thing cannot be patented).
Answering the question of whether an invention is patentable requires an inventor to answer another question: “What is the technical problem which requires the solution I have put forward?” A technical problem or challenge is readily definable: how to make a machine run more efficiently, how to complete a process using fewer operating cycles, how to overcome a limiting factor in some operation, and so on.
Many inventors fall into the rut of more general ideals, such as making business transactions more efficient, a better way to organize human behavior, or some other social problem. Many clients I have worked with make the mistake of thinking they need to sell a business solution to the Patent Office. However, the USPTO is looking for technical solutions. If you cannot define and quantify a problem, it is unlikely that you will be able to define and quantify your solution in a manner that will satisfy the examiners at the USPTO.
Does the invention work?
This seemingly broad question breaks down into two very specific questions:
- Can you explain the landscape of relevant technology that existed before your invention?
- Can you explain how your device works?
There are actually formal requirements for this information, but the USPTO often fails to do so in a specific manner.
Generally, I advise clients to make a video demonstrating how their invention works. Alternatively, we sometimes schedule a video conference with an examiner, in which the inventor demonstrates their product. The latter can be helpful when the examiner has specific questions that the inventor can address.
How is your invention different than similar inventions, and better?
This is somewhat similar to the first question, but with a greater degree of specificity. Usually, the examiner first picks a few references (commonly published patent applications and issued patents) that form the art of record in the case. Then, the examiner asks the inventor to distinguish the invention from these references by explaining how the invention is different and better.
I typically advise my clients to take the drawings filed with their initial application and circle a component or processing step that is not shown in the art of record in the case. If the client can do so, I then set up an interview with the examiner. In the interview, I ask the examiner, “The claimed invention has X, do you think that X is found in the art of record?” This is usually a great conversation starter that moves the case along in the right direction.
Can you phrase this description differently?
Clients often get very stressed out about this type of rejection, but it’s actually very easy to resolve. The examiner just wants to make an adjustment to how part of the application or claim reads in order to make the application more easily understood. As long as you make the suggested change, you’re good to go. It’s just that easy.
It should be pointed out that word choice has a huge impact on patent applications. The use of colloquial or irregular terminology has killed many, many patent applications. It’s highly advisable to have a patent lawyer review the descriptions used in your patent application, and to screen for potential issues like those described above. If you would like assistance with your patent application, the Law Office of Michael O’Brien can help. To learn more, contact us by calling (916) 760-8265, or send us a message using our contact form.