Patent Denied: Everything You Need to Know
If you have your patent denied, you have options. If your case is well presented, there's a good chance of reversing the decision and getting your patent.3 min read
Updated November 23, 2020:
If you have your patent denied, you have options. You may still be able to get a patent for your invention. The first option is to appeal the decision. The second is to file a continuity application. Either way, you'll need to highlight key details about your invention that you believe have been missed previously. If your case is well presented, there's a good chance of reversing the initial decision and getting your invention patented.
Who Denies Patents?
The approval or denial of all patent claims is the sole duty of the United States Patent and Trademark Office (USPTO). However, due to the large volume of applications it receives each year, the USPTO always has its hands full. So, to reduce the chances of rejection, it's important for you to do the following before you apply for a patent:
- Find out if your invention is patentable.
- Carry out a patent search to ensure that an invention similar to yours hasn't already been patented by someone else.
It is important to note that the rejection of a patent request does not mean the invention has been rejected. A patent is simply a government-bestowed right that allows an investor to protect his or her invention and profit from it. Although your patent claims may be rejected, patent examiners don't reject inventions.
Common Reasons Why Patent Requests Get Denied
For patent applications to be approved the invention needs to, at the very least, possess the basic patentability criteria. Although these criteria are considered subjective, patent requests generally get denied when one of the following is true:
- The invention is not novel. If the invention for which you're seeking a patent is not the first of its kind and the examiner can find a previously patented invention that is very similar to yours, then you'll most likely get a rejection. This is why it's important to carry out a patent search on the USPTO website before filing your application.
- The invention is obvious. If your invention is not unique enough to reveal inventive ingenuity, then your patent request for such an invention may not be successful. If there aren't any unique and useful features that distinguish your invention from similar existing ones, then you'll most likely be denied.
- The patent application is improperly written. Patent requests can also be denied when there are errors in the application. These can be of two types. First, we have informalities – dealing with rules/guidelines to be observed when drafting the application. The second is the insufficiency of technical details about your invention.
What to Do When Your Patent Application Gets Denied
If your patent application gets denied, you have two options:
- Appeal the decision.
- File a continuity application.
You can appeal a rejection if you believe that the examiner failed to consider a critical part of your application before rejecting your request.
To file an appeal, you'll need to:
- Obtain an official appeal form from the USPTO.
- Write a detailed brief explaining why you believe the decision was wrong and why you demand a reconsideration.
- Pay the application fee and submit the application, which goes directly to the Board of Patent Appeals and Interferences (BPAI).
- Attend the oral hearing if or when summoned by the board.
The BPAI is the body that reviews all patent appeals that are filed. It examines the priority in the inventor's claim and determines whether the invention does qualify for patenting. In most cases, the appeals get resolved at this point, but if your claim is rejected again, then you'll need to petition the Court of Appeals with your patent request. The Federal Court has the final say and can decide to uphold or reverse BPAI's decision after a careful review of the records.
The second option is to file a continuity application. This is just like filing a new application, in that it requires its own filing fee, but it focuses on sections of the previous application that need further examination. This new application should seek to showcase evidence that addresses the reasons for rejection stated in the previous rejection notice.
Whichever path you choose to take, there will be a lot of legal issues to deal with, so it's highly advisable for you to work with a patent attorney.
If you are worried your patent will be denied or need help with appealing a patent denial, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.