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Written by : Courtney Shepp
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uh greetings my name is william morris i am a patent attorney i have been practicing for almost 15 years at this point um and what i want to talk to you about today is why patent applications get rejected and what i've done is kind of just put together sort of a list of five reasons why your patent application gets rejected and so what i want to do go down through those um explain what i mean by these um why they're significant and then i'd like to talk a little bit about ways just to deal with the reasons why you get rejections and dealing with those rejections so without further ado let's uh let's get started reason number five for why your patent application gets rejected is because of 112. now why do i say that well if you have any sort of experience with a patent office that'll sound really kind of weird to you because 112 rejections are not the most common kinds of projections most cases you don't see a lot of 112 rejections what you see are rejections under 35 section 102 and 103 so for anticipation or obviousness but let me let me show you something to explain what i mean here so this is a a document that i put together i think this is a good kind of a thing to do by the way so over the course of my practice i have um kind of written down sort of knowledge examples so good good good practices um and the very first kind of knowledge example good practice that i wrote down that i thought was worth um capturing was this it says behind every 102 and 103 rejection there is a hidden 112 rejection so here's where i'm coming from with that in my career i have had very few cases where an invention is really the same as the prior art or where it's really so close it would have been obvious um cert probably i could count them on less than one hand um certainly i could count them on less than two hands um but i always get 102 103 rejections because everybody does the reason for that is because it's hard claims are very hard so they're hard to write of course but they're also hard to understand so put yourself in an examiner's shoes they don't know your invention they get this application they've got a limited amount of time that they need to review it to do a prior art search to match against the claims and how are they going to do that well they may not it may not be obvious from the face of the claims especially because claims have to have just that very stilted one sentence style right where you've got your different clauses your different elements and so often examiners will not get the same understanding of what you intended when you were drafting the claims as you had they won't they won't see it as covering the same subject matter and so what they'll do is they will reject it based on what they sort of understand it most likely to mean and because of that you're not getting a rejection based on the prior art what you're getting is a rejection based on a miscommunication between you and the examiner you wrote the claims to say one thing the examiner interprets them to say another and if you try and fight that to say examiner you're wrong you don't know you don't understand you're misinterpreting these claims you're going to have a real problem because the examiners they have the broadest reasonable interpretation rule and you can see so number one on my little list of intelligence and information to keep in mind is there's a hidden 112 behind every 102 103 the next is never argue a definition of a word with an examiner and you can see i've got some of these cases listed to sort of capture this right a bus czar that took a split panel of federal circuit to decide that the word flexible was not the same as crush that was there was a foam insulator and the claim had a flexible foam insulator and the examiner said oh this is covered by something where the the insulator is crushed right so therefore it's not rigid therefore it's flexible now the applicant won that case but look what they had to do they had to win it at the federal circuit and it was a split panel how often is a client going to want to fight that hard to go all that way the answer is very rarely and look one judge and it would have flipped and flexible and crushed would have been treated as the same thing so don't think of this as the examiners wrong don't think of yourself as getting a prior art rejection the number one or excuse me the number five reason is there is always it's ambiguity there's a 112 rejection under it and so what you need to do to deal with this is to work with the examiner to get your case claims in gear but really what you have to understand is the number five reason um that you get your application rejected is even though they're not the most common rejection really it's because of section 112 it's because of ambiguity all right so that's number five reason the number four reason why your application gets rejected is ambiguity so we just talked a little bit about interpreting the claims but let's look because that's not the only thing you have to deal with right you also have to deal with the law and when i was starting out i wouldn't have said this was going to be on on a top five list um because patent law was it had a lot of very precise rules right so in order for something to be obvious and obvious there had to be a teaching a suggestion a motivation to modify the prior art in order to get your invention and that's not true right so after ksr versus teleflex what you have is it's a much more kind of a flexible um uh it's a much more flexible standard there's some prior uh there there's some common sense so after ksr versus teleflex you have a very flexible obviousness standard uh it has common sense is one of the things you don't necessarily have to have a written motivation or suggestion um you you have some creativity in one of ordinary skill in the arts supreme court says they're not an automaton this gives examiners a lot of leeway to reject something is obvious and it gives them a lot of leeway to come to a different conclusion that you did um about a claim that you wrote you don't write a claim to be obvious but you write a claim and the examiner may come to some different conclusion and therefore it's going to be more likely that you're going to get rejected and the same it's not just true with obviousness so i talk about obviousness because 103 rejection you see this all the time but it's true across the board so in 112 when i was starting you have the insolubly ambiguous standard um for claim interpretation now that is not true um you have the henry packard case which uh basically got rid of that um when i was first starting uh you really didn't have to deal with 101 um now 101 rejections are very common and not only are they very common they're based on this sort of a lot of undefined terms like what is an abstract idea right you will see the word it's abstract idea all the time in 101 rejections but that is actually not even a defined term at this point um so there's a lot of ambiguity in the law there is a lot of leeway for a patent attorney writing an application versus a patent examiner looking at an application to come to dif
Thanks for your comment Shaun Slivka, have a nice day.
- Courtney Shepp, Staff Member
hello and welcome everyone to another inventor Icom TV show with mr. Steven key and Damon Kelly how's that guys so good now you see you know what truly great you guys look at my backdrop looking really professional I got the patents on the back and you get this nice little background but the guy that's really important here Damon Calley he's got an alliance Sherlock what's going on here today so no rain in the muck and go into the sand in the sea nice nice nice a lot more fun than our topic for this show Damon it's the same it's the same for me dude this stuff that usually puts me to sleep he loves this if you can make office actions fun for five or eight minutes on this show you can make anything fun man you do that I want to start this off okay there's a lot of people out there that did not follow the invent right way I'm sorry that you haven't I have to say shame on you but you went out there and I did the same thing you guys like the exact same thing out of fear I ran out I filed a couple patents without doing my homework right the next thing you know I'm in that process tonight I go to a patent attorney and ask him hey what is this gonna cost and he gives me this certain number let's say you know ten thousand dollars or whatever and I say okay I can afford that and sure enough I I file it I give him all the information he files that the next thing I know about a year goes by two years go by and I get this I get this note from the USPTO and every one of my claims they're rejected I'm devastated thinking what just happened and I get a call for my patent attorney and he's pretty relaxed about it and he says well that's an easy call settin off this action so Damon what is that the office action is the way the United States Patent and Trademark Office communicates with inventors or their representation and it's I tell everybody the same thing it the the thing you can do to prepare for your office action is just take a deep breath because everybody gets rejected and a rejection is hard I know it is in my entire career I've had three office actions come back with first office action with some allowed planes three in 14 years so now to just tell you how often we get acceptance on the courtroom you just don't damn and you're telling me that almost all the time they just project all of your claims when you contract everything and it and oftentimes the search so what I what I'll do with my clients is we'll talk about it I'll send them the art that was cited against their their claims and they'll read it and they'll say I I don't even understand what this thing is what are they talking about and honestly sometimes I feel the same way I think what in heaven's name you're talking about but what what the examiners can do is piece together pieces of art or you know pat other patents out there and say this combination would equal your thing and then it's up to us to say no these are the reasons why it doesn't and that's sort of when we get into the meat of it okay so I freaked out I take a deep breath I call my patent attorney he calms me down and next thing I know he's gonna and I look at the prior art hey this isn't like my and you go yes it's not but we have to write we have to write it's a cold response office action or an amendment amendment yeah and what is it that costs money so it makes it you know I get this bill you know it could range from 1500 to $3,500 I'm thinking what just happened so we he writes it might rewrite that concrete down sends it off and next thing you know I get another office action and they're all rejected again that is so not uncommon I wish I could say that that was uncommon Steve of it that is the most common no easy oh you go through one or two rounds and then you can work something out David it just takes a while if the Patent Office was in arguing with you attorneys the attorneys wouldn't be making any money off of that case let's be honest about whether it was you know the interestingly enough the examiners get points they work on a point system and they get points for resolving a case for responding to a communication with the applicant so they do actually get paid based on the work that they do so I mean you could argue that they're incentivized to not resolve the case early but I wouldn't make that argument I have to say so so next thing to know I get I get them rejected again and I'm I'm ready I'm in tears now thinking that the USPTO is against me they don't want me to have this patent so I call my patent attorney up and you go hey let's look at it again now I know because I've got too many patents and every single one of those were rejected and first my big yes and it was brutal because two things happen number one my kind of attorney didn't tell me that it was gonna get rejected three times he told me that was gonna cost me ten thousand dollars and every office action I'll cost me a couple thousand dollars so I'm this whole patent process has gotten more expensive he didn't tell me that's one my piece the second beef is and this is not even beef what I've learned is have your patent attorney set up a conference call with the patent examiner and try to find out what can we do to get this thing issued it's not a good strategy because that's what I've been using it seems to work I my strategy is called early and often and so he's you know the first office action maybe I'll call maybe I want depending on what we have it's if it's way out in left field I'll think okay we can just respond to this and we can go but oftentimes the examiner in the text of their argument in the body of the of the office action will give you hints as to what they think is good and what they think is bad for example though they may focus on one aspect too much unusually so and so you can take from that oh they don't like that aspect how can we beat that up how can we narrow that aspect down so they they have a feeling of comfort about it but I love talking examiner's and now there's a new program with the examiners where it's you can get an automatic interview you just sign up and they set a time and you're set it used to be you had to call in and get a hold of them and then sometimes you got I'm sometimes didn't you pay phone tag and it just never worked out it took forever but now it's automatic you can just get an interview right away and it's not matically granted it's awesome okay okay okay so here's a good question for you Damon now I've been on these calls with the patent examiner and my attorney and right away I don't say a word because some of this stuff is way over my head right yeah and in the first five minutes I'm thinking this isn't going well at all and it starts to kind of turn and before you know it in about 20 minutes the patent examiner is really telling my patent attorney what they might look at he said they're giving an opening so it you really have to have a patent attorney I think that have some very good personal skills I think what people forget is that it's it's not an adversarial process it's just another human being on the other side of the line and what you're doing is horse trading we're horse trading
Thanks HicedsTic8 your participation is very much appreciated
- Courtney Shepp
About the author
I've studied transport phenomena at Richmont Graduate University in Chattanooga and I am an expert in sociology of social change. I usually feel hopeful. My previous job was pediatric dentist I held this position for 24 years, I love talking about bus riding and taxidermy. Huge fan of Haikyuu I practice fishing and collect film memorabilia.
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