How to Understand the Reasons for Patent Rejection

To understand the reasons for the rejection of a patent by the U.S. Patent and Trademark Office (USPTO), it's important to know what an inventor must prove in a patent application. The USPTO looks for "novelty" and "non-obviousness," as well as some assurance that the invention will be useful and therefore worthy of patenting. In addition, the patent application itself must contain specific items fulfilled in a specific way.

Difficulty: Moderately Easy

Instructions

Things You'll Need:

• Internet access
• Patent attorney

Understand the Reasons for Patent Rejection

1. Go to an informational Web site such as FindLaw (see Resources below) to get an overview of the patent process in plain English and get tips on how to correctly file a patent application. It may be that your patent was rejected for some fairly simple reasons, particularly if you did not get the help of a patent attorney when you first filed the application.

2. Use the USPTO Web site (see Resources below) to ensure that you have every required aspect of the patent application correct. For example, if a drawing is necessary for your application, but the symbols, shading, legend, lead lines or other details in your drawing are not done to specification, you'll find yourself with a rejected patent application.

3. Read your rejection by the patent board carefully. A reconsideration can be requested relatively easily, but be ready to address the precise issues that were flagged on your application. The patent board is careful to describe these clearly.

4. Put each issue brought up by the patent board on a piece of paper. Using one column marked "procedural" and one marked "fundamental," begin to map out the reasons for your rejection.

5. Review the procedural issues that the patent board found. If they appear to be surmountable--and they usually are--then you may want to continue your re-application.

6. Note well how many fundamental issues there are. If your idea is simply obvious or not novel, then your invention may not be patentable.

7. Re-submit your application after consulting with a patent attorney, if necessary. A patent attorney will be able to help you submit an application that meets the technical requirements of the USPTO if you do have a patentable invention.

Tips & Warnings

• As a patent applicant, you will be given anywhere from 30 days to six months following a rejection to make the necessary amendments to your application and request a reconsideration. After this point, your patent application will be considered by the USPTO to be "abandoned."
• Applying for a patent can be a lengthy and expensive process that takes an average of 22 months and costs several thousand dollars. Work hard with your patent attorney to ensure that your have a watertight patent application. On average, the USPTO issues a rejection for one of every three patent applications they receive.

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