Patent 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.
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 , 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.  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.
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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.
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:
- Patent Search 101: Why US Patent Searches are Critically Important
- 10 Critical Pieces of Advice for Inventors
- There is no such thing as a provisional patent
- Patent Searches: A Great Opportunity for Inventors to Focus on What is Unique
- Should I File a Patent Application Before Licensing the Invention?
- Can cake designs result in intellectual property protection?
- Turning Your Idea into an Invention
- Learning from common patent application mistakes by inventors
- Why Patent Attorneys Don’t Work on Contingency
- Patentability: The Adequate Description Requirement of 35 U.S.C. 112
- Germany Suspends Requirement of Presidential Signature for Formal Ratification of UPC Agreement
- Patentability: The Nonobviousness Requirement of 35 U.S.C. 103
- Patentability: The Novelty Requirement of 35 U.S.C. 102
- Patentability Overview: When can an Invention be Patented?
- Invention to Patent 101 – Everything You Need to Know to Get Started
- The Benefits of a Provisional Patent Application
- What is a Utility Patent?
- Do You Need a Patent?
- Inventing Strategy 101: Laying the Foundation for Business Success
- Patent Prosecution 101: Understanding Patent Examiner Rejections
- Patent Drafting for Beginners: The anatomy of a patent claim
- The Patent Process on a Tight but Realistic Budget
- Patent Drafting for Beginners: A prelude to patent claim drafting
- Provisional Patent Applications the Right Way, the Wal-Mart Way
- Inventing to Solve Problems
- 5 things inventors and startups need to know about patents
- The Quid Pro Quo – How Bad Patents Can Harm A Startup Company
- There is no such thing as a provisional patent
- What is a patent and where do patent rights come from?
- The Best Mode Requirement: Not disclosing preferences in a patent application still a big mistake
- First to File Means File First! The Risk of Not Immediately Filing a Patent Application
- PCT Basics: Obtaining Patent Rights Around the World
- Sell Your Ideas With or Without a Patent
- Understanding the Patent Law Utility Requirement
- Understanding Obviousness: John Deere and the Basics
- When should you do a Patent Search?
- Design Patents 101 – Protecting Appearance Not Function
- The Top 5 Mistakes Inventors make with their Invention
- Patent Searching 101: A Patent Search Tutorial
- Patent Strategy: Laying the Foundation for Business Success
- When Should a Do It Yourself Inventor Seek Patent Assistance?
- The Cost of Obtaining a Patent in the US
- An Inventor’s Guide to Being Taken Seriously by Patent Attorneys
- Plausibly estimating the market for your invention
- The Business Responsible Approach to Patents and Inventing
- A beginner’s guide to patents and the patent process
- Every invention starts with an idea
- Patent Drafting: Thinking outside the box leads to the best patent
- Are you Ready to File a Provisional Patent Application?
- Getting Your Invention to Market: Licensing vs. Manufacturing
 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.
 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.