Patently Strategic Podcast: Dealing with Rejection

So, your patent application got rejected. Now what? In this month’s episode of Patently Strategic, we’re talking about rejection. Specifically, the type that comes from the patent office in the form of an intimidating-sounding three-digit number when your application gets denied by an examiner.

But isn’t that a sad topic, you might be wondering, to be kicking off a new season with – and especially so ahead of the predictable heartbreak that comes packaged with the upcoming Valentine’s Holiday?!? To the contrary! To paraphrase life coach Steve Maraboli, every time you think you’re being rejected from something good, you’re actually being re-directed to something better. No need to stock up on antidepressants or binge on a box of chocolates. In this therapeutic start to our fifth season, we’ll be unpacking why rejection isn’t the end of your relationship with innovation but, instead, just the start of the dance.

Overcoming Sections 101, 102, 103, and 112

Some time after submitting your application, you go through a process called examination with the patent office. This is the part of your patent’s prosecution journey where an examiner reviews your application for conformance to technical and legal requirements. If – and usually when – the examiner finds a problem, they will issue an office action that contains specific reasons for the rejection. You then have the opportunity to respond to and overcome the rejection using various strategies we’ll explore today.

Reasons for rejection fall under four sections of U.S. Statute, Title 35. Sections 101, 102, 103, and 112, which dictate that patents must be eligible, useful, novel, nonobvious, and enabled (or properly described). Patents can be rejected or later invalidated if one or more claims are deemed otherwise.

The Dance

These statutes attempt to codify the constitutionally bound promise of patents to promote the progress of science and the useful arts. They do so by applying constraints to what is considered patentable and systematizing the Grand Bargain of a time limited, exclusive property right in exchange for a public disclosure that keeps society moving forward while incentivizing the individual to create. This property right, unlike the physical property rights that come in the form of deeds and titles, doesn’t rely on physical barriers, boundaries, or fence-demarcated lot lines but instead depends on constructs of human language, called claims. The claims are further supported by additional context found in what’s called the specification of the application.

Rejection on the basis of these four statutes is just the beginning of the delicate process of negotiating this important exchange that has promoted and enabled our innovation economy since the dawn of our country. Patent application rejection is common, expected, and can be used very strategically – but perhaps counterintuitively – to end up with the broadest possible protection while also ensuring there’s something in it for the public.

Episode Overview

In today’s episode, Patent Office Relationship Guru Daniel Wright leads a discussion with our all-star patent panel, delving deeply into defining, coping with, and then dealing with patent application rejection. Along the way, Dan and the panel discuss:

• Why patent applications are rejected.
• The specific types of rejection.
• And strategies for how to overcome each, including some wonderful insights specifically on how to work with examiners on the human level to overcome rejection.

Discussion Panel

Dan is joined today by our always exceptional group of IP experts, including:

• Ashley Sloat, President and Director of Patent Strategy at Aurora
• David Jackrel, President of Jackrel Consulting
• Kristen Hansen, Patent Strategy Specialist at Aurora
• Ty Davis, Patent Strategy Associate at Aurora
• Marie Smyth, Patent Agent at Brake Hughes Bellermann LLP

Mossoff Minute: Patents Aren’t Monopolies

In this month’s Mossoff Minute, Professor Adam Mossoff debunks the myth that patents in the United States are monopolies that impede innovation and block economic growth. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok.

Episode Two Preview: ParkerVision and Rule 36

Stay tuned next month for a very special episode in which we’ll interview Jeffrey Parker, the CEO of ParkerVision. ParkerVision is filing a U.S. Supreme Court Cert Petition challenging the Federal Circuit’s practice of issuing one-word affirmations (Rule 36) in cases that hold life-altering implications for inventors. ParkerVision’s petition aims to establish a baseline of judicial respect for patent holders, as judicial reasoning is key to what makes a court decision a valid court decision.

Related Listening and Reading

To further explore the topics discussed, see the following past episodes and resources:

• Discussion Slides. Presenter notes shared during the panel discussion.
• After Final Practice: Life After Final Rejection. Options available after receiving a final rejection notice from the patent office.
• Patent Anatomy. What’s in a patent? Deep dive on the parts of a patent and how they connect.
• Patent Searching. Sleuthing Your Way to Stronger Patents. The importance of surfacing prior art.
• Patent Wars: Innovators, Revolutionaries, and the Race to Reform. A deep dive into the problems plaguing the patent world, including the madness around subject matter eligibility and enablement.
• Software Patents: Protecting Your Digital Innovations. Strategies for protecting software innovations while dealing with eligible subject matter SCOTUS decisions like Alice.
• Fortifying Life Science Patents: Eligibility and Enablement. The two major plagues confronting life science patenting.
• From Alice to Axle: IP Uncertainty for the Innovation Economy. In part, discusses how the courts are conflating eligibility with enablement.
• Obviousness Case Law Review. Dissects recent court decisions impacting the core patenting issue of obviousness.