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One thing that is often difficult for inventors and those new to the patent field is the idea of being rejected by a patent examiner. It isn’t so much that the term “rejected” is confusing, we all have experience with one type of rejection or another and, generally speaking, it hasn’t been positive.
Much like being rejected by a would-be Valentine, being rejected by a patent examiner is similarly not a positive event. However, unlike certain rejections one faces in life, a rejection from a patent examiner is never the end of the story, and definitely not final – even when the rejection is called a final rejection all hope is not lost and there are things that can be done to continue to attempt to persuade and ultimately convince the patent examiner you are entitled to a patent. Indeed, patents are granted all the time after a final rejection, which must mean that a final rejection can’t be all that final then really, right?
A complete and exhaustive examination of rejections and all the various procedural options that exist after a various types of rejections have been received goes beyond the scope of this primer. Nevertheless, what follows is intended to give some basic understanding of the consequences and options facing patent applicants after they have received a rejection. And while this primer should not be read as encouraging anyone to venture into these waters solo, all inventors and managers working with innovation based technology companies should at a minimum understand the basics.
Rejection of Claims
After the patent examiner reads the patent application a prior art search for the claimed invention is conducted. With the results of the prior art search in hand, together with any additional references provided by the applicant, the patent application is reviewed and analyzed by the patent examiner with an eye toward the state of the prior art in order to determine whether the claims define a patent eligible, useful, novel, nonobvious, and enabled (i.e., properly described) invention. In the event the patent examiner determines that one or more of the claims are not allowable under the law (i.e., Title 35 of the U.S. Code) a rejection will be made. Frequently multiple rejections are made.
The goal of examination is for the patent examiner to clearly articulate any and all rejections to the claims as early in the process as possible so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity. The examiner then reviews all the evidence, amendments to the claims, and arguments responsive to any rejection before issuing the next Office action.
Notice that whenever we talk about a rejection we are referring to the claims or claimed invention. One mistake many inventors make is believing a patent examiner rejects an invention. Inventions are not rejected. What is rejected is the articulation of the invention as it appears in the claims. It is perfectly possible for a patentable invention to be described in the patent application but for the claims to be too broad or otherwise have some kind of infirmity that would lead to a rejection. Therefore, a rejection is not the end of the process, but the starting point of a discussion with the examiner about what he or she will require the claim language to specifically say in order for the claim to be allowable. This is the central focus of the examination process (i.e., patent prosecution) because the patent claims define the exclusive rights actually obtained from the federal government.
Rejections Contrasted With Objections
The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.” The term “rejected” is applied when the problem arises under 35 U.S.C. 101 (i.e., patent ineligibility or lack of utility), 35 U.S.C. 102 (lack of novelty), 35 U.S.C. 103 (the claimed invention is obvious) and/or 35 U.S.C. 112 (lack of adequate description).
If the form of the claim (as distinguished from its substance) is improper, an “objection” is made. The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Patent Trial and Appeal Board, while an objection, if persisted, may be reviewed only by way of petition to the Director of the USPTO. Similarly, the Board will not hear or decide issues pertaining to objections and formal matters not properly before the Board. Having said that, sometimes (perhaps even frequently) a rejection and objection can arise for the same reason because there is overlap between the rules to the form of a claim and the substance. Many times, if you fix the problem with substance the problem with the form goes away. Nevertheless, it is possible to have separate problems between form and substance.
This probably sounds confusing. Suffice it to say that in almost all cases if you only have a problem with the form of the claim that can be rather easily addressed to the satisfaction of the patent examiner. Thus, objections are really best thought of as speed bumps. Rejections can be much more difficult.
Rejections Based on Prior Art
By far the most frequent ground of rejection is on the ground of unpatentability in view of the prior art. In assessing whether an invention is patentable there are primarily two questions that must be answered. First, is the invention new (i.e., novel) compared with the prior art? Second, is the invention non-obvious in light of the prior art? This two-fold inquiry determines what, if anything can be patented.
The question about whether or not there is any single reference that is identical to your invention is a threshold inquiry. Exact identity is a matter under 35 U.S.C. 102, which is the part of the patent laws that relates to what is called “novelty.” If an invention is found that is identical the inquiry ends because no patent can be obtained. If no single prior art reference identically describes each and every aspect of your invention this novelty hurdle has been cleared. If a claim is rejected under 102 because it lacks novelty one way to respond is to amend the claim to further add specifics to the claim so that it no longer identically describes the prior art the examiner has raised as an issue. You can also always choose to argue with the examiner, but generally speaking some combination of amendment and argument is required.
Beyond the question of exact identity, the next question focuses on what makes your invention unique and distinguishable over the totality of the prior art. This is required because when a patent examiner deals with issues of obviousness (i.e., 35 U.S.C. 103) they will look at a variety of references and pull this from one and that from another, ultimately seeing if they can find all the pieces, parts and functionality of your invention in the prior art. There is more to it than just finding every piece and part, because on some level all inventions are made up of known pieces, parts and functionality. The true inquiry is to determine whether the combination of the pieces, parts and functionality found within the area of your invention would be considered to be within the “common sense” of one of skill in the art such that your invention is merely a trivial rearrangement of what is already known to exist. If it is determined to be within the possession of one of ordinary skill in the art the claimed subject matter will be rejected as being obvious. Again, you can amend the claim and/or argue to overcome this type of rejection.
A second or subsequent action on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement (which is how applicants identify material prior art of which they are aware, something that must be done under Rule 56).
Where information is submitted in an information disclosure statement the examiner may use the information submitted and make the next Office action final whether or not the claims have been amended, provided that no other new ground of rejection that was not necessitated by amendment to the claims is introduced by the examiner.
This means that generally speaking the second action you receive from a patent examiner is going to be a final rejection. The importance of this is that after you receive a final rejection you are quite limited with respect to what you can do as a matter of right. This matters because at this point you almost always want one more amendment opportunity, which may not be available.
Once a proper final rejection has been entered, there is no longer any right to unrestricted further prosecution. This does not mean that no further amendment or argument will be considered. Any amendment that will place the application either in condition for allowance or in better form for appeal may be entered. Amendments filed after the date of filing an appeal may also be entered to cancel claims or rewrite dependent claims into independent format. Interviews with patent examiners after final rejection are discretionary and entertained only if circumstances warrant. Ordinarily only one interview after final will ever be granted, but examiners do have discretion to grant a second interview it is determined that it would materially assist in placing the application in condition for allowance.
So even after final rejection there is still opportunity to work with the patent examiner to some limited extent, and you can certainly always appeal.
Generally speaking, what you will want to do after you get a final rejection will not be the type of thing you will have the right to do. In that likely situation, the most common thing to do is file what is called a Request for Continued Examination (RCE), which is allowed under 37 CFR 1.114. An applicant request continued examination of an application at any time after prosecution in the application is closed. Prosecution in an application is closed if the application is under appeal, or the last Office action is a final action, there has been a notice of allowance, or an action that otherwise closes prosecution in the application (e.g., an Ex parte Quayle action).
For our purposes here the first two matter. Let’s say you decide to file an appeal because you think the examiner is wrong, but then change your mind. No problem, just file an RCE. Similarly, if you’ve received a final rejection prosecution is now closed and you can file an RCE. By filing an RCE you will get a fresh round of prosecution with the patent examiner, which means two more Office actions to convince the patent examiner that your claims (or amended claims) are entitled to be issued. Of course, as with everything in the patent space it isn’t quite that simple. Remember above it says that any second or subsequent action can be made final. That means that the first action in an RCE can become a final rejection, which is appropriate if you do not force the examiner to consider something that they haven’t seen before. But that starts to take us toward Patent Prosecution 102 and beyond. Stay tuned!