6 secrets to overcome a patent rejection

You’ve filed your application, and finally, after several years, you receive a correspondence from the US Patent and Trademark Office, commonly called an office action. The bureau’s action indicates that all of your claims have been denied. Then what do you do?

1. Understand what rejection means. Is the rejection a 102 rejection or is it a 103 rejection? There are specific approaches to treating each type of rejection. For example, 102 rejections can generally be overcome by persuasively arguing that the claimed invention is other than prior art or by modifying the claims to be different from prior art. 103 rejections, on the other hand, are handled differently. For example, if the rejection of 103 is based on a combination of references, the combination can be challenged on the grounds that there is no teaching, suggestion, or motivation to combine the references. There are also various forms of 102 rejections, and it is important to check the specific statute. For example, a 102(a) denial may be based on a reference filed by a related entity and may be overcome by filing affidavits indicating that the reference is not a patent application from “another” or a different entity.

2. Review Claims. Characteristics of the invention are often only described in the specification and may not be included in the claims.

3. Make sure the examiner understands the difference between your invention and prior art. Scheduling a phone call with an examiner is a great approach to overcoming rejection. This practice is commonly known as having a “telephone interview” with an examiner. For example, you can use a telephone interview to explain how a feature of the invention is not present in the cited reference. In the telephone interview, you can tell the examiner where in the claims the distinguishing features of the invention were included.

4. Determine the differences between your invention and the state of the art. It is a good idea to create a list of differences between your invention and the prior art. If during his telephone interview the examiner was not convinced that a feature of his invention was absent from the prior art, he may be able to rely on another distinction to overcome rejection. Once you have a Notice of Grant, you can fight the examiner over the feature that the examiner has rejected in a subsequent application.

5. Check the dates of the references cited against your application. Depending on the type of denial, the denial can be overcome by a practice called “attrition” of the reference, which generally involves the filing of an affidavit or declaration under 37 CFR 1.131. For example, the practice of “withdrawing oath” from the reference may be used to precede a reference or activity that qualifies as prior art under 35 USC 102(a) and not under 35 USC 102(b), e.g. e.g., where the prior art date under 35 USC 102(a) of the patent, the publication or activity used to reject the claim(s) is less than 1 year prior to the applicant’s effective filing date or patent owner.

6. Check your priority date. If you have filed a prior provisional patent application or a foreign application, you may wish to compare your priority date with the publication or issue dates of prior art references. You may need to properly claim priority from the earlier filing date to beat a reference.