We previously spent some time explaining the meaning of patent application rejections commonly issued by the U.S Patent Office. Once you understand the examiner’s complaint, knowing what materials to submit to the patent office, or how to best assist your attorney in responding to the notice, you can significantly expedite the process. Here is a rundown of the most common rejections, and what to do in response.
A rejection under Section 101 because the invention is not directed to patent-eligible subject matter requires the assistance of a lawyer.
There are some issues in the patent world that can be dealt with by do-it-yourselfer inventors. But a rejection for a lack of patentable subject matter requires the immediate intervention of an experienced patent attorney.
A patent lawyer will need to read over the response in detail to see what—if anything—can be done to remedy the problem. While there are specific instances in which you can overcome a rejection relatively easily by using experimental results to show how your invention solves a technical problem, you really want to get a lawyer to help parse the patent office’s concerns.
A video demonstration is a quick-and-easy way to respond to rejections under Section 101 or Section 112 based on the invention not working.
It’s not unusual for there to be a breakdown in communication and understanding between an examiner and the patent applicant. This may result in the examiner believing that the invention hasn’t been shown to actually work. The easiest way to solve this is to record and upload a YouTube video demonstration the functionality of your invention and send the link to the examiner.
If you want to avoid potentially disclosing the video publicly (such as by accidentally making it discoverable by not having it set as a ‘private’ video), you can perform a live demonstration during an examiner interview, or by scheduling a video conference.
Rejections for prior art can commonly be resolved in one of two ways, depending on the nature of the invention.
For physical inventions—machines and systems that do work—look at your drawings and find a unique component that’s not in any of the prior art references cited. Circle it. Odds are, that’s your inventive step, or at least an inventive step that can be used to argue the USPTO’s rejection based on the art of record. Submit your marked-up drawing(s), with a detailed explanation of how that part figures into your invention, and isn’t found in the prior art.
When it comes to dealing with software processes and control logic, or anything that involves the use of a flowchart while functioning, it’s the same basic idea. But instead of identifying a unique physical component, you will want to identify a unique, distinguishing processing step.
Rejections based upon how things are worded can require a very cautious, detail-oriented approach.
Inventors sabotage themselves ALL THE TIME with patent applications featuring inexact phrasing and word choice, or even worse, by using made up words. In fact, the term ‘nonce’ is used by patent courts to describe words used by inventors in a manner not in keeping with commonly understood meanings. Using trademarks or other personal terms can seriously undermine your patent.
Now, there are times when it’s necessary to make a word up because there is no existing word that describes what you have created, or that helps encapsulate a concept that is otherwise unwieldy or confusing. But it’s imperative that you only utilize these colloquialisms in a very intentional and cautious fashion, taking great pains where necessary to explain and define the vocabulary used.
A good way to gut check your work is to find a coworker or friend who is in your field, or otherwise has the technical background necessary to understand the functionality of your invention. Call them up and ask, “Do you understand what XYZ is?” If they respond in the affirmative, you’re probably okay. Better yet, they may be able to offer you an alternative viewpoint and help you to craft a description that is more transparent to an outside observer.
In the end, most office action rejections are legal issues, requiring the assistance of an attorney specializing in patent law who can best help you discern what needs to be done to bridge the gap between you and a contrary patent examiner. The Law Office of Michael O’Brien can help you do just that. To schedule a consultation, contact us by calling (916) 760-8265, or send us a message using our contact form.