Top 3 Reasons For Receiving A “Office Action” Regarding Patent Rejections
The prior art will be the main reason for most patent rejections. The examiner does not believe your claimed invention is novel enough, as evidenced by these rejections. The US Patent Office (USPTO) will review your comprehensive, non-provisional patent application after you’ve submitted it and will decide whether you qualify for a patent after 20 years have passed. Receiving a preliminary rejection, also known as an office action, is quite possible. So what are the reasons for rejecting patents?
Reason 1: The lack of novelty in the invention
For acceptance, a patent application must be declared innovative, non-obvious, and beneficial by the US Patent Office’s patent examiner. The three requirements often referred to as the “patentability criteria,” are a matter of opinion. In other words, the assigned examiner’s judgment will determine if your invention is regarded as innovative, nonobvious, and beneficial. The first likely factor in your patent application being denied is that your idea is not considered new.
The patent examiner may reject an invention based on the patentability criteria if it is not truly the first of its kind or lacks novelty. Suppose the examiner can identify a prior innovation or product that is identical to yours and was created before yours. In that case, your design may not be considered new and may be refused. The examiner will write a letter of denial (referred to as an “office action”) and include the prior invention or product (referred to as “prior art”) as a reason for the rejection.
Before submitting a patent application, it is advised to conduct a patent search because it is crucial to submit a patent application for a novel invention. Before you apply for a patent, you should perform a patent search to see whether your creation exists and is not original.
Suppose you receive an office action because the examiner believes your invention isn’t unique. In that case, you can hire a patent expert to prepare a response to the examiner to support your claim. The examiner frequently struggles to locate a prior invention (also known as prior art) that is 100 per cent similar to yours. As a result, we contend that your design is unique and distinct from the prior art that the examiner identified.
Reason 2: The obviousness of the invention
Based on the second requirement for patentability, the need that an invention is “nonobvious” comes as the second most frequent reason for rejecting a patent application. Don’t forget that your design must not only be considered unique. But now, in a nonobvious manner as determined by the subject opinion of the Patent Office examiner. Simply said, the examiner must believe that your invention differs enough from existing technologies. You would want to make sure that your innovation differs as little as possible from anything already on the market to limit the likelihood that it will be considered precise and receive an office action. The higher the chance that the examiner would deem your innovation nonobvious and eligible for a patent. The more distinct and novel your invention is compared to existing technology. You could still have a patent expert submit rebuttal arguments to the examiner to argue for approval if you obtain an office action for being considered evident to the examiner who discovered the patent application. We contend that your invention should be deemed nonobvious to qualify for a patent instead of being recognisable since it contains certain features and elements that are not disclosed in the examiner-listed prior art.
Reason 3: Unacceptably written in a patent application
The third common cause of receiving an office action is the patent application’s mistakes. Two categories of frequent mistakes exist.
First, there are instances of what we refer to as informalities. In which a few minor rules and guidelines for the patent application are ignored. These might include:
- Paragraph numbers, line numbers, component numbers, and reference numbers on drawings: problems
- Incorrect grammar or punctuation
- Using ‘the’ when ‘a’ is required to refer to a component is an improper use of syntax.
- Having an abstract that is too long or not present
Informalities are minor issues that need rectification and can typically be fixed.
Second, if your patent application was poorly written and did not provide enough information regarding the operation of your invention, you risked rejection. Typically, this is a problem that is difficult to resolve.
One key idea in patent law is that you must fully and accurately explain how to create your invention to be granted a patent. Without what is known as complete disclosure of your design, the Patent Office is unable to decide whether or not it is, in fact, patentable.
Therefore, the patent application must disclose a complete technical description of each component of your invention. And how those components are organized. The problem is that most people who have never written a patent application before lack the necessary vocabulary. And understanding to tell the innovation in the manner demanded by the patent office.
Technical and legal knowledge is essential for adequately drafting a patent application to understand the invention. And its functions and choose the appropriate phrasing and syntax. The most significant issue is that a patent application cannot be changed to include new material once it has been written.
This means that if a patent application is written with insufficient disclosure and the patent examiner rejects it, for this reason, it is not possible to add extra details to the patent application at that point to complete the missing information.
Therefore, it is crucial to have the patent application adequately written. And submitted when it is first due.
A second patent application, known as a child application, may be required to be filed if your patent application is rejected due to insufficient information to resolve the missing data in the original application.
Has your patent application been denied by an office action? Please let us know so we can receive an estimate for a professional patent response.