Understanding the Patent Process: Rejections vs. Objections

By Gene Quinn
April 2, 2016

denied-mailboxPatent prosecution can sometimes seem to be a rather byzantine process to those who are new to the patent system. Truthfully, it can be rather a rather peculiar process for even those who are intimately familiar the procedures of the Patent Office.

As with anything, the more you understand the better prepared you will be for the events that will unfold during the time your patent application is being reviewed by the Patent Office. With that in mind, today we will tackle the differences between rejections and objections. In a nutshell, from the applicant’s perspective there is really very little difference, both are denials that need to be addressed if a patent is ultimately going to issue.

Getting Started

Many inventors, small businesses and universities will start the patent process by filing a provisional patent application. There are real benefits associated with provisional patent applications, and there is absolutely nothing wrong with starting the patent process with a provisional patent application, but it is critical to understand the limitations of such an application. First and foremost, cheap provisional applications are a waste of time because you absolutely, positively must describe the invention with full and complete detail. Second, a provisional patent application is never going to be substantively reviewed by the Patent Office, and it will never mature into an issued patent. If you want to obtain utility patent protection in the U.S. you will need to file a nonprovisional utility patent application [1], or enter the national stage in the U.S. having first filed an international patent application.

Regardless of whether you file a nonprovisional patent application, or your patent application enters the U.S. national stage from an international patent application, the first time the applicant will substantively hear from the Patent Office will be when a First Office Action on the Merits (FOAM) is received. [2] This first treatment by the patent examiner most frequently will result in all of the patent claims filed being disallowed. This is not a cause for panic, at least not if you filed a solid patent application with a robust disclosure and meaningful patent claims from the start.

Denying Patent Claims

First, it is important for applicants to understand that when a patent examiner issues an office action that refuses to allow all claims the patent examiner has not rejected the invention. The term rejection will undoubtedly be used, but what is being rejected are the patent claims provided. Patent examiners do not reject inventions. This is true because patent examiners only examine the patent claims you submit. The patent claims will define the exclusive right granted by the Patent Office, so the job of patent examiners is to make sure the claims you receive are appropriately patentable, nothing more. Of course, what this means is that all that wonderful text in the rest of the application does not define your property right. The text and the drawings help inform the meaning of the patent claims, but the patent claims actually define the property right you have been granted.

Second, you will likely see two different kinds of seemingly similar terms used by patent examiners when they are refusing to allow patent claims. Claims can either be rejected or they can be objected to, and in some cases a claim can both be rejected and objected to for the same reason.

The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.” The term “rejected” is used by the patent examiner when the substance of the patent claims being sought are deemed to be unallowable under 35 U.S.C. 101, 102, 103 and/or 112. If the form of the claim (as distinguished from its substance) is improper, an “objection” is made. An example of a matter of form as to which objection is made is dependency of a claim on a previously rejected claim. You can also get an objection where claims have not been properly grouped together in violation of 37 CFR 75(g).

The practical difference between a rejection and an objection is that a rejection involves the merits of the claim and, therefore, is subject to review by the Patent Trial and Appeal Board (PTAB). Meanwhile, an objection, if persisted, may be reviewed only by way of petition to the Director of the USPTO. Generally speaking, rejections relate to the law (i.e., Title 35 of the U.S. Code) and objections relate to the rules (i.e., Title 37 of the Code of Federal Regulations). There is substantial overlap between the enabling legislation (i.e. the U.S. Code) and the rules (i.e., Federal Regulations) so it is entirely possible that you will see an objection and a rejection for the same reason.

Conclusion

Regardless of whether you are facing an objection or a rejection you must fix the application in one-way or another. The goal is to get a notice of allowance from the patent examiner, which cannot happen until only allowed claims are present in the application. Thankfully, you have an opportunity to reply to the FOAM, to fix the claims, amend the claims and/or try and make convincing arguments that persuade the examiner that you are correct and they were mistaken.

In a future article we will talk about substantively addressing rejections. In the meantime, for more information about patent basics please see:

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[1] Design patent applications can also be filed, but design patents protect only the ornamental appearance. Another type of special patent application that can be filed is called a plant patent application, which would cover asexually reproduced plants. Plant patents are quite rare. Design patents are common, although probably not as common as they could or should be, having received a bad reputation over the years after being promoted by certain unscrupulous industry actors who lead (or allowed) inventors to believe a design patent offered far more protection than it actually does.

[2] If an application contains more than one invention the patent examiner will issue what is called a restriction requirement, which forces the applicant to elect which invention to proceed forward with for purposes of examination. While a restriction is considered enough to satisfy the requirement the Office do something within 14 months to prevent the accrual of additional patent term, it is not truly a substantive treatment because the claims are not evaluated for patentability.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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There are currently 1 Comment comments.

  1. PAUL MORGAN April 3, 2016 9:57 am

    An excellent educational post Gene.

    As to “objections” and the need to petition them [if the examiner cannot be persuaded to withdraw them by amendment and/or argument]: The PTO Office of Petitions has had a bad habit of delaying decisions on petitions until after the application response due date, so petitions should be filed ASAP and the applicant cannot wait for petition decisions to respond to the last office action until the application goes abandoned.