Understanding the Patent Process: Rejections vs. Objections

Patent prosecution can sometimes seem to be a rather byzantine process to those who are new to the patent system. Truthfully, it can be rather a rather peculiar process for even those who are intimately familiar the procedures of the Patent Office.

As with anything, the more you understand the better prepared you will be for the events that will unfold during the time your patent application is being reviewed by the Patent Office. With that in mind, today we will tackle the differences between rejections and objections. In a nutshell, from the applicant’s perspective there is really very little difference, both are denials that need to be addressed if a patent is ultimately going to issue.

Getting Started

Many inventors, small businesses and universities will start the patent process by filing a provisional patent application. There are real benefits associated with provisional patent applications, and there is absolutely nothing wrong with starting the patent process with a provisional patent application, but it is critical to understand the limitations of such an application. First and foremost, cheap provisional applications are a waste of time because you absolutely, positively must describe the invention with full and complete detail. Second, a provisional patent application is never going to be substantively reviewed by the Patent Office, and it will never mature into an issued patent. If you want to obtain utility patent protection in the U.S. you will need to file a nonprovisional utility patent application [1], or enter the national stage in the U.S. having first filed an international patent application.

Regardless of whether you file a nonprovisional patent application, or your patent application enters the U.S. national stage from an international patent application, the first time the applicant will substantively hear from the Patent Office will be when a First Office Action on the Merits (FOAM) is received. [2] This first treatment by the patent examiner most frequently will result in all of the patent claims filed being disallowed. This is not a cause for panic, at least not if you filed a solid patent application with a robust disclosure and meaningful patent claims from the start.

Denying Patent Claims

First, it is important for applicants to understand that when a patent examiner issues an office action that refuses to allow all claims the patent examiner has not rejected the invention. The term rejection will undoubtedly be used, but what is being rejected are the patent claims provided. Patent examiners do not reject inventions. This is true because patent examiners only examine the patent claims you submit. The patent claims will define the exclusive right granted by the Patent Office, so the job of patent examiners is to make sure the claims you receive are appropriately patentable, nothing more. Of course, what this means is that all that wonderful text in the rest of the application does not define your property right. The text and the drawings help inform the meaning of the patent claims, but the patent claims actually define the property right you have been granted.

Second, you will likely see two different kinds of seemingly similar terms used by patent examiners when they are refusing to allow patent claims. Claims can either be rejected or they can be objected to, and in some cases a claim can both be rejected and objected to for the same reason.

The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.” The term “rejected” is used by the patent examiner when the substance of the patent claims being sought are deemed to be unallowable under 35 U.S.C. 101, 102, 103 and/or 112. If the form of the claim (as distinguished from its substance) is improper, an “objection” is made. An example of a matter of form as to which objection is made is dependency of a claim on a previously rejected claim. You can also get an objection where claims have not been properly grouped together in violation of 37 CFR 75(g).

The practical difference between a rejection and an objection is that a rejection involves the merits of the claim and, therefore, is subject to review by the Patent Trial and Appeal Board (PTAB). Meanwhile, an objection, if persisted, may be reviewed only by way of petition to the Director of the USPTO. Generally speaking, rejections relate to the law (i.e., Title 35 of the U.S. Code) and objections relate to the rules (i.e., Title 37 of the Code of Federal Regulations). There is substantial overlap between the enabling legislation (i.e. the U.S. Code) and the rules (i.e., Federal Regulations) so it is entirely possible that you will see an objection and a rejection for the same reason.

Conclusion

Regardless of whether you are facing an objection or a rejection you must fix the application in one-way or another. The goal is to get a notice of allowance from the patent examiner, which cannot happen until only allowed claims are present in the application. Thankfully, you have an opportunity to reply to the FOAM, to fix the claims, amend the claims and/or try and make convincing arguments that persuade the examiner that you are correct and they were mistaken.

In a future article we will talk about substantively addressing rejections. In the meantime, for more information about patent basics please see:

• An Alternative to Claim Mirroring in Initial Patent Application Filing
• IP Goes Pop! You Can’t Do That – What IP Cannot Protect
• How to Use the USPTO Patent Public Search Tool
• Using Analytics to Assess the Effectiveness of Common Patent Prosecution Practices
• Tips from a Former Examiner on How to Conduct Interviews at the USPTO
• Ten Mistakes to Avoid When Drafting Information Disclosure Statements
• Defanging Descriptive Material Rejections
• Can You Refile a Provisional Patent Application?
• Ten Common Patent Claim Drafting Mistakes to Avoid
• It’s All in the Hardware: Overcoming 101 Rejections in Computer Networking Technology Classes
• Disclosure Requirements in Software Patents: Avoiding Indefiniteness
• Patent Procurement and Strategy for Business Success Part III: Prosecution – Wielding an Invisible Hand
• Patent Procurement and Strategy for Business Success Part II: Claims – Targeting the Right Infringers
• Patent Procurement and Strategy for Business Success: Building and Strategically Using Patents that Target the Right Infringers and Thwart Competitive Countermeasures
• Fit to Drive: Three Inspiring Office Action Responses from the USPTO’s Art Unit 3668
• Design Patents 101: Understanding Utility Patents’ Lesser-Known Cousin
• Two Key Steps to Overcome Rejections Received on PCT Drawings
• Errors in Issued Patents as a Measure of Patent Quality
• Intellectual Property for Startups: Building a Toolkit to Protect Your Products and Design
• Why the Patent Classification System Needs an Update
• Understanding What a Design Patent is Not
• Design Patents: Under Utilized and Overlooked
• Deciding Where to Obtain International Patent Rights
• When to Use the Patent Cooperation Treaty—and Why It’s So Popular
• Why and When Design Patents are Useful
• PCT Basics: Obtaining Patent Rights Around the World
• ipAwarenessAssessment: Inventors and Business Owners Should Start Their IP Journey with this USPTO-NIST Tool
• Successful After Final Petitions Can Help Advance Prosecution (Part V)
• From Agent to Examiner and Back Again: Practical Lessons Learned from Inside the USPTO
• WIPO’s INSPIRE Offers a New Way to Select Databases for Patent Searches Involving Machine Translations
• Understand Your Utility Patent Application Drawings
• Why It’s Time to Board the PCT Train: The Benefits of Filing U.S. Patent Applications via the PCT First
• Implications of Filing Subsequent Patent Applications in the United States (Part III)
• Types of Subsequent Patent Applications in the United States (Part II)
• Getting a Patent: The Devastating Consequences of Not Naming All Inventors
• Getting A Patent: Who Should be Named as An Inventor?
• Make Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting
• Applying for a Patent in Germany
• Autopilot or Advocate? Raising the Bar in Ex Parte Appeals at the USPTO
• Time to ‘Think PCT’: Rethink Your Global Patent Strategy to Preserve Your Seat at the Table
• Patent Office Insights from Two Former Examiners
• Conventional Patent Wisdom Revisited
• Develop Your Database of Templates for Responding to Office Actions
• Background Pitfalls When Drafting a Patent Application
• Eight Tips to Get Your Patent Approved at the EPO
• Four Things C-Suite Executives Need to Know About Patents
• Starting the Patent Process on a Limited Budget
• What to Know About Drafting Patent Claims
• Beyond the Slice and Dice: Turning Your Idea into an Invention
• Mitigating ‘Justified Paranoia’ via Provisional Patent Applications

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[1] Design patent applications can also be filed, but design patents protect only the ornamental appearance. Another type of special patent application that can be filed is called a plant patent application, which would cover asexually reproduced plants. Plant patents are quite rare. Design patents are common, although probably not as common as they could or should be, having received a bad reputation over the years after being promoted by certain unscrupulous industry actors who lead (or allowed) inventors to believe a design patent offered far more protection than it actually does.

[2] If an application contains more than one invention the patent examiner will issue what is called a restriction requirement, which forces the applicant to elect which invention to proceed forward with for purposes of examination. While a restriction is considered enough to satisfy the requirement the Office do something within 14 months to prevent the accrual of additional patent term, it is not truly a substantive treatment because the claims are not evaluated for patentability.