Expect the Rejection
No one likes rejection. But a first rejection of your patent application might be good news. Here’s why.
The primary goal of the patent attorney-client team is to obtain a patent whose claims cover the client's invention in whole or at least in part. The first step is the drafting of the patent application (specification and claims) from which a patent can be issued. The drafting is time-consuming (usually weeks) and expensive.* With the relief that comes from completing and filing a patent application, you, the client, might think that the hard part is over. You and your attorney have spent hours discussing, crafting, reviewing, and revising your claims. You know the art and feel confident that you're entitled to those claims. Unfortunately, those expectations are almost certainly unrealistic.
More often than not, your claims will be rejected. You should expect this, be prepared for it, and appreciate the benefit of it. That first rejection, be it under 35 USC 112 (enablement or written description), 102 (novelty), or 103 (obviousness), shows that the examiner has carefully reviewed your claims and specification. This is exactly what you paid for and exactly what you want. A first action allowance raises the question, "how thorough was the examination?" A first rejection confirms a thorough examination.
In addition to confirming a thorough examination, the first rejection illustrates how the examiner interprets your claims. This is a critical benefit, especially for word-based claims, i.e., claims that don't recite chemical structures or DNA/RNA sequences. No matter how carefully crafted your claim language is, it is still open to interpretation. Understanding an examiner's interpretation of your language can confirm your own interpretation or point to a different, potentially problematic interpretation. You don't want to learn about that problematic interpretation during an IPR (inter partes review) or, even worse, from a District Court. You want to learn from a first action rejection.
A final benefit of the first action rejection is the opportunity to work with the examiner to fix the errors in your claims (or convince the examiner there are no problems with your claims). You have the right to amend your claims in response to a first rejection. It's dramatically harder to amend claims in an issued patent. Thus, the first action rejection is your opportunity to strengthen your claims. Expect that rejection and be prepared to use it to your advantage.
In a future blog, we'll discuss what to do when an examiner or even the entire USTPO is dead set against issuing your patent. It's a great story!
*Please check with me if you've paid more than $10,000 for a single application.