Patent Rejection is very common. The chances of predicting uncertainty in your patent application are often difficult and hard to find. If we take an example of the IP industry, the inventor puts all of his or her efforts to create and finalize the patent application. But not all become successful in getting a patent registered. Therefore, it is important to understand the reasons why your patent application gets rejected by the patent examiner.
Patent Rejection
Sometimes, patent inventors often get confused about what rejection means due to a lack of knowledge and experience. However, patent rejection is certainly not the end of the story. For new filers, the USPTO and the patent office give several changes to the patent filers to make modifications in their patent application. An office action is issued when the application first gets rejected. The patent inventor needs to make changes and submit the application again for checking. This can take place several times depending upon the performance of the inventor and willingness of the patent examiner for that particular invention.
In the end, a final rejection is issued which is known as the final office action that gives the inventor to make changes to the application the one very last time. But, inventors should not lose hope even after the final office action response, several things can be done to continue to attempt to proceed and finally satisfy the patent examiner’s requirements. Well, this makes it more curious to know the reasons for your patent rejection.
What is ‘Refusal of Patent’?
It clearly states that the Commissioner must be fully satisfied with the patent application if they have to grant the application with a patent. If the Commissioner is not satisfied with the patent application then they have the right to reject it and that’s called a ‘Refusal of Patent’. This patent rejection is then addressed to the applicant or their registered third party or agent in the form of an official letter with the reasoning for the rejection.
Criteria and Reasons for Patent Rejection
Reason 1:- Not Novel
Criteria
An “invention” is a new product or process having an inventive step and capable of the industrial application according to Section 2(1) (j) of the Indian Patent Act. Further, Section 2(l) of the Act defines ‘new invention’ as any invention which has not been anticipated by publication in any document or used within the country or outside that country before the date of filing of a patent application with complete specification. In other words, the subject matter has not fallen in the public domain or that it does not form part of the state of the art.
Reason for Patent Rejection
If the invention for which patent rights are claimed is not the first of its kind or it lacks novelty then the patent examiner may reject based on the patentability criteria. If the examiner can find any other existing invention, product, or technology that was invented before or the same invention then your invention is not novel and may be rejected. The examiner will send the rejection letter and cite the previous invention or product i.e. “prior art” as the reason for patent rejection.
It is recommended to perform a patent search before applying for a patent application. A patent search will help you to find if an invention already exists or is not novel.
If you get an office action for the reason that your invention is not novel then you may consult a patent professional to help you for approval. Most of the time, the examiner is unable to find a previous invention known as “prior art” that is completely identical to your invention.
Reason 2:- Not an Inventive Step
Criteria
As per the Section 2(1) (a) “inventive step” or “non-obviousness” means a feature of an invention that involves technical advance as compared to the existing invention or knowledge or having economic importance or both and that makes it not obvious to a person skilled in the art.
Reason for patent rejection
The second common reason for patent application rejection is based on the second patentability criteria i.e. need to be “nonobvious
To reduce the chances of being declared as obvious and receiving an office action, you have to make sure that your invention is as unique as possible from anything else that is already out there. The more unique your invention is and the more features and differences it has as compared to what is already before, the higher the chances the examiner will find your invention nonobvious, and hence you will get the patent.
If you do receive an office action then you can check and find your product uniqueness which makes it differ from the other products or you can also take the professional help to get the patent.
Reason 3:- Not Have an Industrial Application
Criteria
The third criterion specifies that the invention should be capable of industrial application. As per the Section 2(1)(ac) of the Patents Act 1970, explains that “Capable of Industrial application” about an invention as the invention is “capable of being made or utilized in an industry.” so, an invention must be useful to be patentable.
Reason for patent rejection
An invention is not granted patent protection because it does not serve some useful purpose. If the invention is not capable of being put to industrial use then the examiner will not grant you a patent. Generally, the industrial application is required and hence refusal based on a lack of utility is uncommon. If the patent specification does not specify an enabling patent then a patent will not be granted. An enabling patent means a patent draft specification must specify the invention sufficiently, to enable a person skilled in the same field as the invention relates to or carries out the invention without undue effort.
Reason 4:- Patent Application Improperly Written
The third common reason for receiving an office action is because of errors in the patent application. Common errors are of two types.
First, there are what we call informalities where some minor rules and procedures of the patent application are not there. These can be:
- Issues with, line numbers, paragraph numbers, component numbers, or reference numbers on drawings
- Grammatical or punctuation issues
- Improper use of syntax like ‘the’ when it should ‘a’ to reference a component
- Exceeding word limit on the abstract or missing abstract
Informalities could be fixed and are referred to minor issues the examiner wants to be corrected.
Second, you could receive a patent rejection if your application was insufficiently written where there is not enough detail about how your invention works. This is an issue that cannot be simply fixed.
You should disclose exact and complete information regarding how to make your invention. Without this, the Patent Office can’t determine if your invention is indeed patentable. Therefore, a fully comprehensive and detailed description of every component in your invention, and the arrangement of those components must be disclosed in the patent application. So, if a patent application is written with insufficient disclosure and the patent examiner rejects for this reason then it is not possible to add in more details to the patent application at that time if you want to fill in the missing details. Therefore, it is important to have the patent application properly drafted and when initially filed or you can take professional help for this task.
Conclusion
So I hope this article will help you to know various reasons for patent rejection. You should consider all the criteria for the patent to be granted. This will help you to get a patent without any difficulty.
To talk with a member of our team today, contact Trademarkcart on +1-3024672224. We Provide services of trademark and International patent service. Firstly its advice to do a patent search. Do apply today, Hassle-free services !!! We offer
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