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Patent Rejection

After you file your patent application, it will wait for between 12 and 36 months before the US Patent Office assigns an Examiner to review your application. Typically, the Examiner will reject your entire patent application. This formal rejection is known as an “office action.” Office actions require a formal response within 3 months, but you may respond within 6 months if you are willing to pay substantial late fees. Failure to respond will result in losing all patent rights.
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The Examiner will have conducted his own search for “prior art.” Usually, there are three kinds of rejections:

  • §101 patent rejection: the invention is not useful;
  • §102 patent rejection: the invention is completely described in a single prior art document; and
  • §103 patent rejection: the invention is an obvious combination of two or more prior art documents.

Any and all patent rejections must be overcome. The Examiner’s arguments can be overcome by argument, evidence or amendment. Amendments can effect the scope of the patent later. By finding the most likely prior art before the examination, and avoiding it, you are better able to avoid amendments during examination. This can strengthen patent protection because unamended patents enjoy slightly broader protection than those that have been amended.

Patent Searching

Can you patent a new use of an existing product?