What is a Patent Rejection?

In intellectual property law, a patent rejection is defined in United States federal law as the refusal to grant claims due to “unpatentable” subject matter.

In order to better understand patent rejections, it is important to learn about the patent application process. Once your patent application is complete, it is submitted for review to a patent application examiner at the United States Patent and Trademark Office (USPTO). The examiner will, among other things, check your claims in relation to the prior art. Following the examiner’s analysis, he or she will then decide whether to approve or reject the application. The rejection is generally served in the form of an Office Action. It is not uncommon to receive at least one Office Action throughout the patent application process.

Key Takeaways

• According to United States federal law, a patent rejection is the refusal to grant claims due to the inclusion of unpatentable subject matter.
• The majority of patent applicants will receive at least one Office Action rejecting one or more claims.
• An objection to a patent is different from a rejection of a patent. Rejections occur when the patent does not meet the standards of U.S. intellectual property law. Objections are based on technical or formatic issues in the application.

Common Reasons for Patent Rejection

As stated above, you may be served with a patent rejection in the form of an Office Action when one or more of the claims in the application are “unpatentable” according to the law. In general, patents are typically rejected for the following reasons:

• The patent is obvious: in the U.S., creations and inventions must be non-obvious in order to qualify for patent protection. If your claims contain elements that are also found in a prior application, the patent will be deemed obvious. This is one of the most common reasons for patent rejection.
• The patent is not novel: in patent law, the novelty of a patent refers to its uniqueness and originality. A creation or invention is considered novel if its elements are not included in a prior mention, disclosure, application, product or article. Novelty differs from non-obviousness since novelty rejections are based on a single reference for rejection while obviousness often uses a combination of references.
• The patent contains non-patentable subject matter: some things simply cannot be patented. A few examples include living things, physical phenomena, abstract ideas and discoveries. It is highly advised to work with a licensed patent attorney that can help you determine whether or not your creation or invention is patentable.

Patent Rejections vs. Patent Objections

Patent rejections and patent objections may sound similar, but they have very different meanings. Patent rejections are focused on the legality and patentability regarding the substance of patent claims. Accordingly, patent rejects are subject to review by the Patent Trial and Appeal Board (PTAB). Patent objections, on the other hand, relate to the format of the application. A patent may be objected due to technicalities within the claims. For instance, there are certain rules and guidelines that must be observed while drafting the application. If they are not followed, you may receive a patent objection.

Bottom Line

It can be frustrating and disappointing to receive a patent rejection. However, do not lose hope! Patent rejections are common and they are not final judgments. Work with one of our top-tier intellectual property attorneys to both overcome and prevent patent rejections.