“I can’t believe I got a rejection!” How many times have you heard a client say that after putting together a rock solid application, filing and waiting patiently for two to three years to hear back from the patent office, only to be met with disappointment? Heck, I’ve said that myself after receiving a particularly frustrating office action from an examiner. But I want to encourage you and your clients to take heart!
Patents are a losers’ game. Nearly everyone who files an application will experience the frustration of rejection. In fact, a Yale Journal of Law and Technology article found that The USPTO delivered a non-final rejection decision for 86.4% of filed applications. Fortunately the majority of those rejections can ultimately be resolved through negotiations with the examiner. The good news: whether your client is looking to secure a core piece of IP, or simply to round out a portfolio, they need not despair. Patent attorneys have an arsenal of techniques available, from claim amendments, to interviews and office action responses, for converting rejection into allowance. The bad news: this can be a tedious process. Sometimes the explanation handed down by the examiner as to why a particular claim is not allowable seems baffling at best.
If you are still wondering how this could have possibly happened to you, read on. I’ve put together a list of the five reasons why a patent application gets rejected together with my two top tips for effectively dealing with this frustrating but inevitable part of the patent application process:
#5. Behind Every Prior Art Rejection lies a Hidden 112 Rejection
The Basics of Patent Law:
United States Code Title 35 deals with the law that governs the grant of patents in the country. The most common rejections at the USPTO are rejections dealing with prior art under sections:
- 102 – for lack of novelty or anticipation
- 103 – for the invention being obvious
Section 112, on the other hand, deals with the way claims, description of subject matter, and other specifications are drafted in the patent application. The rejections under section 112 are far less common. However, what most patent applicants fail to realize is that hidden within every 102 or 103 rejection lies a 112 rejection in disguise.
Difference in Examiners’ and Prosecutors’ Understanding of the Claim Language:
I have rarely come across inventions that are the same as prior art or so close to it as to make them obvious. Still, I frequently receive rejections under sections 102 and 103. Everybody does. That’s because the claims in a patent application are hard to write and even harder to understand. Put yourself in the examiner’s shoes: they don’t know your invention the way you do, and have a limited time to review it, conduct the prior art search, and map it against the claims. How are they going to do that? The full scope and nature of the invention may not be evident to the examiner from the face of the claims, mainly because the claims have a very stilted one-sentence style, with various clauses and elements.
Often, the patent examiner will not get the same understanding of your invention as you intended it. As a consequence, you are not getting a rejection based on prior art, but based on a miscommunication between you and your examiner. You wrote the claims to mean one thing and the examiner interpreted them to mean something else.
Be Wary of BRI:
If you tell the examiner that “you are wrong,” or “you don’t understand,” or “you’re misinterpreting claims,” you’ll have a real problem because the examiners can support the validity of their reading (no matter how erroneous you may find it) under the broadest reasonable interpretation rule. According to broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, as customarily understood by those of ordinary skill In the art, unless such meaning is inconsistent with the specification.
Never Argue The Definition of a Word With the Examiner:
A good example of the perils of arguing on word interpretation is In Re David Buszard, Matthew D. Phillips, Richard S. Rose And Stephen B. Falloon, 504 F.3d 1364 (Fed. Cir. 2007). In this case it took a split of the panel of the Federal Circuit to decide that the word “flexible” was not the same as “crushed.” The claim described a flexible foam reaction mixture and the examiner stated that Buszard’s claims, when given their broadest interpretation were anticipated by an earlier invention by Eling that taught a rigid polyurethane foam which, when mechanically crushed, lost its rigidity because it was in small particles. Eventually, the applicant won that case but they had to win it at the United States Court of Appeals for the Federal Circuit, where it again was decided by a split panel. How often is a client or an inventor going to want to fight that hard to go all that way? The answer is very rarely. Moreover even if they do, it can be highly risky. In Buszard’s case, if even one judge would have decided otherwise, it would have flipped the decision, and ‘flexible’ and ‘crushed’ would have been treated as the same thing.
When you get a 102 or 103 rejection, don’t think of it as “the examiner is wrong,” and don’t think of yourself as getting a prior art rejection. All that you need to do is work with the patent examiner to get your claims in gear.
#4. Ambiguity in Law
Reason five talks about interpreting the claims, but that is not the only ambiguity you have to deal with! You also have to deal with the law. When I was starting out, I wouldn’t have said that this would be on the top 5 list, as at that time, patent law had very precise rules. In order for something to be obvious, there had to be a teaching, a suggestion or a motivation to modify the prior art to get your invention patented. However, that is not true anymore.
The New Obviousness Standard:
In KSR International Co. v. Teleflex Inc. Et Al., 127 S. Ct. 1727 (2007), the Supreme Court laid down a much more flexible obviousness standard that began to incorporate common sense. The invention no longer necessarily needed to have written motivation or suggestion to be considered obvious, and the creativity of one of ordinary skill in the arts now came into play. The Supreme Court declared that “a person of ordinary skill is also a person of ordinary creativity, not an automaton.” This ruling has given examiners a lot of leeway to reject something as obvious simply because they came to a different conclusion than you did about a claim you wrote.
Insolubly Ambiguous Standard for Claim Interpretation:
I have focused on obviousness because in a 103 rejection, you see this all the time, however it is the same across the board. In 112 around fifteen years ago, you had the insolubly ambiguous standard for claim interpretation. The Supreme Court got rid of that in the case of Nautilus, Inc., V. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) wherein it was held that it did not “satisfy the statute’s definiteness requirement” and replaced it with a new standard of indefiniteness in which a patent is considered invalid “if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”
Rejections Under Section 101, USC Title 35:
When I was first starting, you didn’t really have to deal with rejections under section 101. This section is responsible for delineating the categories of inventions that are eligible for getting a patent, specifically, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Conversely, any inventions that do meet the requirements defined under 101 are not considered subject matter eligible. Rejections under section 101 are now quite common, and are based on very undefined or insufficiently defined terms, like an abstract idea that have created a lot of ambiguity in the law. There is much more leeway for the patent attorney writing an application and the patent examiner reviewing it to come to different conclusions as a result. This is why the number four reason why you are going to get rejected is because of ambiguity and slippage in the law.
#3. Acts Of God – Changes in Law, Policies and Landmark Cases
The number three reason for rejection of your patent application is essentially the acts of God. By God, I mean the Supreme Court and Demi-god, the Federal Circuit Court. You get rejections because of legal changes outside of your control. When I was starting my practice in the early 2000s, patent law was reasonably dependable. There had been changes in the ‘90s but things were pretty settled down by this time. Then came a series of landmark decision. In addition to the ones mentioned above, these include:
- Bilski Et Al. V. Kappos, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office, 561 U.S. 593 (2010)
The Supreme Court of the United States, in this case, held that “The machine-or-transformation test is not the sole test for patent eligibility under §101. The Court’s precedents establish that although that test may be a useful and important clue or investigative tool, it is not the sole test for deciding whether an invention is a patent-eligible “process” under §101.”.
- Ariad Pharmaceuticals, Inc. V. Eli Lilly And Company, 598 F.3d 1336 (Fed. Cir. 2010)
The Federal Circuit, in an en banc opinion, garnering support from nine of the eleven active judges of the Federal Circuit, considered the written description requirement, confirmed that it was a separate requirement for patentability from enablement, and provided further guidance on how it should be applied.
- Alice Corporation Pty. Ltd. V. CLS Bank International Et Al., 134 S. Ct. 2347 (2014)
The Supreme Court held that “the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”
- Richard A. Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015)
The Federal Circuit overturned the precedent that emphasized a “strong presumption” that a claim limitation lacking the word “means” is not subject to 35 U.S.C. § 112(f). During its decade-long tenure, the strong presumption had facilitated an expansion of functional claiming that was unchecked by statutory constraint.
- Vanda Pharmaceuticals Inc. V. West-Ward Pharmaceuticals International Limited, 887 F.3d 1117 (Fed. Cir. 2018)
While addressing the complicated topic of patent subject matter eligibility, the Federal Circuit ruled that the asserted claims are not directed to the patent-ineligible subject matter.
- Steven E. Berkheimer V. HP Inc., FKA Hewlett-Packard Company, 881 F.3d 1360 (Fed. Cir. 2018)
The Federal Circuit in this case has held that, “A claim is not representative simply because it is an independent claim.”.
There have been a lot of changes in the law. Every few years, a case comes that will really shake things up. When you are drafting the patent application, you don’t necessarily know what the law is going to be when the application is examined. You send your application to the USPTO and it may take several years before an examiner even looks at it. During that time, who knows, a fundamental rule like obviousness may get entirely reworked by the judicial bodies. Needless to say, this is something completely out of your control and impossible to predict, but you have to deal with it. It’s a known unknown. We are facing uncertainty again in 2021, as a new administration was just sworn in. This means that there are new people in the USPTO. We don’t know what they are going to do. Will they continue with the current policies or come up with new ones? When you draft a patent application, you really have no choice but to draft in accordance with the rules and policies as they exist today; things may change tomorrow, or at some point down the road, when the application gets examined. These inevitable but unpredictable changes in legal circumstances are the number three reason why your patent application gets rejected.
#2. Attempt To Get Broader Protection
The number two reason why a patent application gets rejected is that you tried to get broad protection for your invention. That’s not a bad thing. In fact, most attorneys prefer to draft broad claims defining the invention with the goal of achieving broad protection, and to then narrow things down with various dependent claims as becomes necessary. This can result in rejection as examiners usually focus on the independent claims first and then consider the dependent claims second. Technically they are all looked at individually, but the dependent claims almost always seem to stand or fall with the independent claims.
Justin Pax provided some interesting insight on this topic in an article written from the perspective of a patent examiner evaluating when and how to issue a rejection. Mr. Pax, who was then a L.L.M. candidate with several years experience as a patent examiner, discussed the practicalities of evaluating an application, noting that searching can be tedious, a seemingly never-ending process. Even when a prior art search was unfruitful, the examiner may still find many other grounds for rejection by drawing upon reasoning, case law precedent, USPTO practice rules enumerated in MPEP, or other rationales.
Reading this article serves as a reminder that if you try to claim broad protection, the fact that you have dependent claims does not necessarily get you an allowance. Although in some instances, you may be successful, the examiner is more likely to reject your dependent claims by focusing on the independent claims. Moreover, by getting what they consider to be solid prior art, examiners can use secondary ideas about things like case laws and doctrines on the dependent claims to issue rejections.
#1. You Filed A Patent Application
Nearly 90% of patent applications receive at least one rejection. These are just the numbers. It doesn’t mean you don’t get a patent; it just means your application goes through an examination process where you discuss it with the examiner, make claim amendments and present arguments for your case. Some junior examiners issue rejections just because they have supervisors, and they don’t want to let something through that’s no good in the first go. A lot of give-and-take happens between you and the examiner. It all starts with a rejection. That’s just the way it is. Therefore, as tautological as it may sound, the number one reason why a patent application gets rejected is that you filed a patent application.
Ways to Deal with Patent Rejections:
- Patents are about technology and not the words
- Have the knowledge to respond to a particular type of rejection
#2. Patents are About Technology and Not the Words
As we discussed above, words, by their very nature, introduce a certain ambiguity into descriptions of inventions. Changes in case law insert still more uncertainty into the application process. However, inventors apply for patents not because they are able to present legally compelling claims, but because they have created something new and valuable, with the potential to make the world better. The patent system is supposed to provide incentives for such inventions.
Given these broad parameters, if the system is working reasonably well, you should be able to get a patent for inventions with merit, despite the ambiguity inherent in the process. To do this you need to make sure you can convince the examiner that the inventor did something new, that it’s an innovation, and that it really makes the world better.
My strategy is to put a good deal of detail in the patent application; more than is legally required. Applicants have no obligation to include detail beyond what a person having ordinary skill in the art would need, but I do it anyway. For example, if I have an application for software that performs a certain function, I will include the extra detail of walking through the function step-by-step. The details vary from case to case based on the novelty in the invention, but I want it to have something concrete that I can use to walk through with the examiner to make sure the invention is really clear. Once the examiner and I are on the same page about what the invention is, we can begin to work through what kind of language to use to craft claims in a way the examiner is comfortable with and that works with current legal requirements.
#1. Have the Knowledge to Respond to Particular Types of Rejections
Although case law may change, there are certain techniques, strategies and best practices in patent prosecution that will always remain constant. For instance, it is never to your benefit to argue over the definition of a word with the examiner. Part of being professional is having the information and knowledge to respond to the rejection available when you need it. When necessary, seek help from peers, more senior colleagues or other resources to make that happen.
I have found it helpful to gather information on what happens during the prosecution process over the course of my career, so that I don’t have to reinvent the wheel each time I go in. This knowledge can go a long way towards coming up with solutions you and the examiner are both comfortable with.
At IP Toolworks, we have designed patent prosecution software called Arguminer that analyses rejections, and matches them to successful responses other attorneys prepared for the same examiner or in similar situations. This can add another arrow to your quiver. Given the near-certainty of rejection, that extra insight can be good to have.
Hopefully this shines some light on why your patent application gets rejected.
Unlike those other inevitable unpleasantries of life, death and taxes, it is heartening to know that there are things you can do about it, provided you equip yourself with the right mindset and knowledge.
– Here’s wishing you the best of luck in all your contributions to the useful arts –
Disclaimer - “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”