Patent Rejected First Time? – Don’t Panic

Patent attorneys and experienced inventors know that most U.S. non provisional patent applications are rejected the first time.  In fact, they expect a first rejection.  However, novice inventors, no matter how many times you tell them about the high likelihood of a first rejection, seem surprised when it comes.

Why do I say this?  Because many first time inventors give up after a first rejection from the United States Patent and Trademark Office (USPTO).  Intelligent, but naïve, individuals who were so gung-ho about their ideas appear to cave at the first sight of a USPTO action.

From their perspective, I suppose it makes sense – hey I tried but I got rejected, why should I waste any more time and money on this.  However, from an experienced filer’s perspective, giving up after a first USPTO office action frequently makes no sense.

It’s really very simple:  If the majority of patent applications are rejected the first time, and if the inventor is going to give up after a first rejection, then what is the point of filing for a patent application?

Some inexperienced inventors take senseless submission to an extreme, giving up in the face of any action by the USPTO, whether or not it is a rejection.  For example, the USPTO may put forth a restriction requirement which may require the inventor to elect one of several inventions which may limit the application to only some of the claims.  However, inventions and/or claims which are not elected may be put into one or more divisional applications, if timely filed.

Although restriction requirements are not rejections, some inexperienced inventors, perhaps frustrated or confused by further complication, needlessly abandon their applications.

As another example, the USPTO may reject some of the claims of a patent application, but indicate that there is allowable subject matter.   Generally speaking, this usually means the inventor will be able to get an issued patent with some changes.  However, novice inventors, again perhaps befuddled by further required efforts, may give up their patent application even when allowable subject matter has been indicated.

What every inventor needs to keep in mind is this: Trying to get an issued U.S. patent is a process.  That process begins, but does not end with, the filing of a U.S. patent application.   Assuming the patent application is a non-provisional patent application, it will be examined by the USPTO and in all likelihood there will be one or more USPTO office actions which will require one or more responses by the patent applicant.

If everything works out well, the result of the process may be an issued patent for the application.  However, it is also possible that a patent may never issue.

In any case, having a patent attorney, such as Walter J. Tencza Jr. (PATENTNOW.COM®), assist in the process is invaluable.

 

 

 

 

 

 

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