Top Reasons a Patent Application Gets Rejected

There are many reasons a patent application can be rejected by the Patent Office.  Below are a few of the main reasons it could be:

Invention is Obvious

“Obvious” is a technical term in the patent world. It does not indicate that the invention is obvious in the ordinary sense of the world. The test is slightly more objective than that: It means that a single reference, or the combination of several prior art references, renders the invention obvious. In other words, the invention’s claimed elements can also be found in the prior art and there is some reason to combine those claimed elements together to form or build your invention. This rejection gets made frequently and can be difficult to overcome.

Lack of Novelty

A finding of novelty means there is no single reference – a past patent, application, disclosure, article, product, etc. – which is essentially the same as the claimed invention. Novelty is a problem if an invention is too close to a single something which has been done before. Moreover, novelty is different than non-obviousness.  While an obviousness rejection can be built on the combination of several references, a novelty rejection must rely on just one reference.

Patent Application Claims Written Incorrectly

This can be a big problem for the pro se applicant, an inventor that represents himself or herself.  Patent claims are incredibly difficult and demanding to write – the Supreme Court itself has stated that patent claims represent the most demanding legal instrument to draft.

There are a number of pitfalls when writing claims. If the claims are not punctuated correctly, they will be rejected. Or if the claims discuss elements that aren’t properly introduced, they will get rejected. Further, if the claims are directed to material not discussed in the written description, they will get rejected. And if the claims are directed to material not identified in the drawings, they will get rejected. If the claims use terms inconsistently, or refer to features or arrangements in the alternative, they will get rejected. Even further, if the claims are not written in a proper dependent form, they will get rejected, or may incur expensive surcharges.

The claims are a potential minefield of rejections.

Issues with the Drawings

Patent drawings used to have formal, rigid requirements. Many of those requirements have been loosened, but there are still a number of ways the drawings can create problems. Introduction of shading, greys, or colors will often lead to a rejection. Stray marks, blurry lines, and smudges will cause problems. If a drawing is indicated as having only pure black-and-white marks, but actually contains some grey (even grey that looks entirely black), the drawing quality will be extremely reduced when the application is published, and this can lead to a rejection.

Issues with the Written Description

The written description provides support for the claims. Without adequate support, the claims cannot mature into any grant of protection. A lack of written description support can manifest in a few main ways.

First, the written description may not disclose the best mode of the invention. Although this requirement has changed over the past few years, the best embodiment, or best way, of practicing the invention must be disclosed somewhere in the application.

Second, the written description may fail to describe how the invention is made and used. The written description has to describe the invention with sufficient specificity such that someone skilled in the relevant industry could make and use the invention.

Third, the written description must be of sufficient detail so as to clearly convey to the public that the inventor has actually invented the claimed subject matter and was in possession of the invention.

Patent Application Covers Non-Patentable Subject Matter

This rejection arises infrequently, but when it does, it is difficult to overcome. Most things are patentable. But some just aren’t. For example, you cannot patent the law of gravity, or a mathematical formula, or a method of organizing human behavior. Such rejections frequently arise in the context of software applications; software applications and processes used to be largely patentable, but the Supreme Court eroded much of their eligibility for patenting in the first half of the 2010s.