My patent was rejected – what do I do?

My patent was rejected by the patent examiner – what do I do?

First off, do not worry.

The back-and-forth process between the examiner and applicant is a necessary part of getting a strong patent allowed. You want the examiner to fully understand the invention and do a competent job of searching. If the examiner does a poor job, your patent will not withstand attack. You want the examiner to do a good job.

When you receive a rejection, the examiner will cite references which are typically other patents and sometimes “Non-Patent Literature”. In the Office action, the examiner will explain how the references show the features of your claims. Sadly, many of the examiners use a lot of shorthand notation and not a lot of verbose explanation, and this can seem hard to understand and quite daunting. I have responded to over 1000 Office actions, and I would be happy to explain what the examiner is trying to say.

In some cases, the examiner may be wrong. The examiner may not fully appreciate the nuance of your invention, or the examiner may not fully understand the references. The patent attorney/agent must politely yet persuasively argue the proper interpretation.

In some cases, the examiner may be right. The patent attorney/agent might amend the claims to get around the references, which may narrow the invention. In some cases, the narrowed claims may not have much business value and the patent application may be abandoned.

The industry average is between 4 and 5 Office actions *on average*. Some cases will have many, many more Office actions, and some will have fewer. I have had cases with well more than a dozen Office actions, and some that have a first action allowance.