Introduction to the Different Types of Patent Objections. Episode 42

Previous Episode on Rejections

In the last episode, I discussed common patent rejections. In this episode, I will go over some common patent objections.

Understanding the Difference Between Rejections and Objections

You might wonder why there are two different terms—rejections and objections—when, in practical terms, they both mean you can’t get a patent yet. While the distinction may seem minor, the legal difference is important because it affects who you can appeal to if you want to challenge the decision.

If you receive a rejection, like the ones discussed in the last episode, you must appeal to the Patent Trial and Appeal Board (PTAB). If you receive an objection, like the ones covered in this episode, they are typically more technical in nature rather than legal, and you must petition the Director of the United States Patent and Trademark Office (USPTO) to address them.

There is some overlap where an issue can be both an objection and a rejection. Either way, you must correct the issue to proceed with your patent.

Common Patent Objections

Objections generally arise from non-substantive matters. This means they usually do not concern the patentability of your invention but instead relate to issues such as unclear drawings or misnumbered claims.

A common objection involves the form of your claims.

Objection to a Claim Depending on a Rejected Claim

One type of objection that can actually be a good sign is when a claim is objected to because it depends on a rejected claim.

For example, let’s say you are claiming a mechanical pencil, and in Claim 1, you describe it as having parts A, B, and C. The examiner finds an identical mechanical pencil with parts A, B, and C, so they issue a 35 U.S.C. §102 rejection for Claim 1.

However, in Claim 2, you write: The mechanical pencil of Claim 1, further comprising D. Let’s say the examiner believes that adding part D makes the invention patentable. The examiner still cannot allow your patent because Claim 1 is rejected. Instead, the examiner will issue an objection to Claim 2, stating that it depends on a rejected claim. However, the examiner is also signaling that if you incorporate Claim 2’s additional feature (D) into Claim 1 and cancel Claim 2, they will allow the patent.

To resolve this, you simply rewrite Claim 1 to include what was previously in Claim 2 and then cancel Claim 2. By doing this, you overcome the rejection and resolve the objection at the same time, allowing your patent to proceed.

Objections to Drawings and Formatting Issues

You may also receive objections to your drawings if they do not meet USPTO requirements. If your drawings are unclear or do not have crisp, precise lines, they will be objected to.

For example, if your written description labels a part with reference number 32, but you never actually include a number 32 in any of your figures, you will receive an objection. Similarly, if your abstract is too long, you may also get an objection. Even simple spelling errors in your application can lead to objections.

Resolving Patent Objections

Many objections are easy to fix by correcting typos, renumbering claims, or providing clearer drawings. However, some objections can be more challenging to resolve, and in later episodes, I will discuss scenarios where objections become significant obstacles and when they are relatively minor issues that can be quickly addressed.

Next Steps

In future episodes, I will cover specific techniques for overcoming objections. Now that you understand the general difference between objections and rejections, we can move on to the next episode, where I will discuss how to handle the first substantive correspondence you receive from the patent office about your application—called an Office Action.

I’m Adam Diament, and until next time—keep on inventing!