Great News, Your Patent Application Has Been Rejected!

 Great News, Your Patent Application Has Been Rejected! by Pat Werschulz

{Read in 4:30 minutes} Whenever I start a conversation with a client with the phrase, “Good news: Your patent application was rejected,” I get: “What?”

I always tell my clients from the very beginning that patent applications normally are rejected, and it’s a good thing. Over 90% of all patent applications have at least one rejection when they’re first examined by a patent examiner.

Now why is that? Is it that patent attorneys and patent agents are so incompetent that they can’t prepare an application? Is it for technical reasons, such as a missing paper or a form completed incorrectly? That’s not what we’re talking about here. We’re talking about something that the Patent Office, in its own unique language and vocabulary, calls an “office action.”

An office action is a substantive rejection of your application.

Before that, the Patent Office looks at your application, makes sure all the parts are there and that every form is filled out properly. Applicants have a few months to get anything corrected that is technically missing. What we’re talking about is a rejection of the content, and more specifically, rejection of the claim.

Now, we’ve talked about claims before. Claims are what we call the metes and bounds. They are the boundaries of what the applicant believes are the extent of the novelty of their invention. That’s pretty close to what it says in the statute.

What’s this all about? When a patent application is submitted with claims, a patent attorney tries to craft those claims to be as broad as possible. If you don’t ask for the very limits of what you think the novelty could be, you’re not going to get it. Ask for less, you get less.

I tell my clients, “Do you remember when you were a kid and asked your parents for money? You needed $20, but you were afraid you’d be refused, so you’d ask for $10, and they didn’t blink an eye. Then you’d say, ‘Oh, I should have asked for $20.’” Always go into the Patent Office asking for $25 if you need $20. The only way you’re going to get the $20 is by asking for more.

Why is it good news? The good news is that if your patent application is rejected, it means that the patent examiner did a good job of searching for prior art—that is, things that existed before you filed your application—and looked at those documents closely and found where there were things that perhaps you were claiming that somebody else had already thought of.

Now, I’ve talked to people who litigate; that is, go to court with patent holders and sue somebody. They don’t like to take cases, and some refuse to take cases, unless the patent was rejected at least once on its past application to issued patents. I have talked to people who arrange the sale and licensing of patents, and they told me the same thing. Why? They’re concerned that if the application goes through without being rejected, that it wasn’t examined properly. If it’s not examined properly, it could be easily invalidated at trial, or it could be easily rejected by a potential buyer or licensee if they see it as weak.

The good news is you’re going to be rejected. The good news is also about 75% of all patent applications that receive an initial rejection, then go on with one response of amendments and arguments to become a patent that will have meaning in the marketplace and in the courtroom.

Patricia Werschulz

Patricia P. Werschulz

Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016
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