Will the Patent Office reject my Application?

The quick answer is: yes.

The job of the USPTO is to filter applications by examining them — primarily for novelty and obviousness. For this reason, the Examiner’s first substantial response in most cases is to reject the application for being non-novel or non-obvious. However, this is NOT inherently a rejection of your invention as a whole, and should not be taken as such. Instead, it is a rejection of the initial set of claims (which define exactly what your invention is) that were filed with your application. Experience indicates that the USPTO expects that Examiners who are doing a thorough job will typically reject every application at least once so that the claims are refined.

The Examiner is instructed that:

… the patent application should be reviewed and analyzed in conjunction with the state of the prior art to determine whether the claims define a useful, novel, nonobvious, and enabled invention that has been clearly described in the specification. The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity.

MPEP 706

Think of it this way: your (and your patent practitioner’s) job is to get the broadest set of claims, while the USPTO Examiner’s job is to make sure the claims don’t take away what is public knowledge. Together, this helps to make the strongest set of claims available for your invention. Without the USPTO, you would easily overlap publicly known information. Without you and your patent practitioner, the USPTO would narrow your claims too much to be on the safe side. Working together, you can make a strong set of claims.

Thus, the patent application process is a back-and-forth process. Your patent professional submits an application on your behalf with an initial claim set. The Examiner responds with a rejection, stating where they believe the claims overlap other ‘prior art.’ Then, your patent professional responds (often after conducting an interview with the Examiner), either making one or more amendment to more clearly distinguish what is your novel invention, or pointing out where the Examiner misunderstood something … or, more often, doing both. Ideally, an agreement is eventually reached and a patent issued.

If you cannot reach an agreement after 2 rounds back and forth, you may:

  • file a continuing application or request for continued examination to continue the process
  • file a continuation-in-part to add information to the application that may make it more likely to be allowed
  • appeal the Examiner’s decision to the PTAB
  • abandon the application.

However, a well-researched and thoroughly-prepared patent application often does not reach this pass, and can reach an agreement and receive a Notice of Allowance on some of the claims. It is important to work with an experienced and diligent patent professional who will collaborate with you to create a thorough application, and will work with the Examiner on your behalf, representing your interest while still collaborating with — rather than alienating — the Examiner to produce a strong set of allowable claims.