Inventors may have their patent applications rejected by the U.S. Patent and Trademark Office for a variety of reasons throughout the patent application process. In the U.S. Patent Law, Article 101 is the patentable subject matter (that is, the patented invention is not the subject matter of patent protection), Article 102 Novelty (the patented invention does not have novelty), and Article 103 Non-obviousness (the patented invention does not have non-obviousness). ), Article 112(a) Description (the patent does not meet the requirements for fully describing the invention and implementing the invention) and Article 112(b) Clear expression (the inventor has not used claims to limit the boundaries of the invention he claims to protect, so that The public can easily distinguish the limits of the inventor's legal rights) can be used as grounds for rejection.
As shown in the figure above, the most common reason for rejection in the first review process in the past ten years was Article 103 non-obviousness, accounting for 66%, followed by Article 102 novelty, accounting for 38% . The least common rejection factor was the authorizable subject matter of Article 101, accounting for only 6.1%. It should be noted that the sum of all rejection reason percentages is not 100%, because each rejection can contain multiple factors.
Why are the most patent applications rejected due to non-obviousness?
Article 103 of the U.S. Patent Law stipulates that a patented invention must be significantly different from the prior art. Therefore, if a patent application is rejected for non-obviousness, it means that the invention is obvious. Non-obviousness is subjective. An effective way to determine whether a patent is non-obvious is to find a person skilled in the art. Is the extent of the invention obvious to a person skilled in the art when applying for a patent? Although this approach is adopted in court law, it is still controversial because the technical background has a strong impact on the outcome of the decision. Patent completion times are different, and in different technical backgrounds, the prior art for non-obviousness determination and the level of general technical personnel may be different.
How should applicants respond to rejected applications?
For patent applications that are rejected due to non-obviousness, the applicant has many ways to deal with the first rejection, such as requesting continued examination, petition, negotiation, or a combination of several methods. Let’s first take a look at all the ways to respond to patent applications that have been rejected due to non-obviousness before deciding which option to choose. Since there are various ways to respond to patent rejections, it is not certain which method everyone will choose first, but it is certain that these responses are made before the application is rejected again or the patent is granted.
In response to the first review, the vast majority of applicants chose to submit a request for continued review, accounting for 56.6%. The proportion of applicants who chose to meet and appeal was very small, 6.9% respectively. % and 9.3%. The proportion of applicants who chose the method of combining continued review requests and interviews was also very small, at 9.3%. Other coping methods, including abstention, accounted for 17.9%.
What is considered a successful response to patent rejection?
Some patent applications were rejected for the first time based on non-obviousness. In some cases, although the patent was not granted patent rights, non-obviousness was not involved in the second rejection. This can be said to be our success. "For example, the first rejection was due to non-obviousness and licensable subject matter. After the applicant responded, the second rejection occurred because of the licensable subject matter alone. The reason for rejection did not include non-obviousness. This shows that the response should be Success.
As shown in Figure 4, a petition is the most effective way to respond to a Section 103 rejection, followed by a meeting, and the least effective response is to file a request for continued review plus a meeting. The method slightly increases the probability of success. Although filing a request for continued examination is the most common way to deal with Article 103 rejection, it turns out that this method has the lowest success rate. Of course, which method is most effective depends on the examiner of the patent case. When some applicants see the overall situation of the USPTO examiners and technical centers, many applicants will skip the request for continued examination and go directly to the appeal process.
Answer source: Common patents in the USPTO. What are the reasons for rejection of the application?