Introduction to Types of Patent Rejections. Episode 41
- Adam Diament
- Mar 19
- 3 min read
Understanding Patent Rejections and Objections
So far in this podcast, I’ve covered drafting, filing, and receiving an allowance for a U.S. patent application. However, most of the time, the patent office will not allow your application right away. This is normal, so don’t panic—it’s expected.
When your patent application is examined, you’ll typically encounter two types of issues: objections and rejections.Rejections are based on legal principles, while objections usually arise when you fail to follow certain procedural rules of the patent office. If you receive a rejection, it means that, legally, you cannot obtain a patent for what you are claiming. The four main types of rejections you’ll see are:
101 Rejections
102 Rejections
103 Rejections
112 Rejections
These numbers correspond to sections of the United States Code, specifically Title 35. In this episode, I will cover rejections, and in the next episode, I will discuss objections.
101 Rejections: Patent-Eligible Subject Matter
A 101 rejection means that your claims do not describe patent-eligible subject matter. The full text of 35 U.S.C. §101states:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
For example, if you attempt to patent a purely mathematical formula, you will receive a 101 rejection because a mathematical formula does not qualify as a useful process, machine, manufacture, or composition of matter.
Generally, 101 rejections are not a problem unless your claim involves a business method or certain types of software-related inventions. Most inventions fall into a category that can be patented.
102 Rejections: Novelty
A 102 rejection is a novelty rejection. I won’t read the full text of 35 U.S.C. §102 since it’s quite long, but you can look it up online. This rejection means that the examiner believes they found something identical to what you are claiming.
For example, if you are claiming a new kind of mechanical pencil with parts A, B, and C, and the examiner finds another mechanical pencil that also has parts A, B, and C—even if it includes additional parts—you will receive a 102 rejectionfor anticipation. This means that all the limitations of your claim already exist in a single prior reference, whether it’s another patent, a catalog, or any other publicly available source.
103 Rejections: Obviousness
A 103 rejection is based on obviousness. The examiner is saying that while your invention does not exist exactly as you claimed, they found two or more references that could be combined to create your invention. If this combination is deemed obvious to a person having ordinary skill in the art, you will receive a 103 rejection.
I will discuss how to respond to these rejections in a future episode, but it’s important to note that 103 rejections are the most common type of rejection. About 80% of rejected applications include a 103 rejection.
112 Rejections: Specification and Claim Clarity
A 112 rejection covers different aspects of the patent specification and claims. The two most common types are 112(a)and 112(b).
112(a) Rejection: This occurs when your application lacks a description sufficient to enable a person having ordinary skill in the art to make and use your invention. If the examiner believes that you have not provided enough detail for someone to reproduce your invention, you will receive a 112(a) rejection. Additionally, if you claim something that was never discussed in your written description, you may also receive this rejection.
112(b) Rejection: This rejection arises when your claims are not written in a clear and precise manner. The relevant text from 35 U.S.C. §112(b) states:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
If your claim language is ambiguous or unclear, you may receive a 112(b) rejection. For example, if your invention includes two types of rods—a curved rod and a straight rod—but your claim states, the rod is connected to the base, without specifying which rod, the examiner may reject it for being unclear.
Final Thoughts
While there are other types of rejections, they are much less common. The primary ones to be aware of are 101, 102, 103, and 112 rejections, which I have explained in this episode.
In a future episode, I will discuss how to respond to these types of rejections. I’m Adam Diament, and until next time—keep on inventing!
