Final rejection of patent examination – no reason to give up hope
In the fall of 2021, the inventor of a household device with a follow-up problem approached 4B company. Our client’s development in 2019-2020 began to enjoy great popularity on Amazon.com and generate substantial income. The inventor reasonably thought about acquiring exclusive rights to sell the product and, accordingly, a certain monopolization of the business in order to achieve the most efficient commercialization of the result of his creative work. Having carried out the research, the client came to the conclusion that the most adequate way to implement his plans was to obtain a patent for the design in the United States.
After analyzing the offers on the market, the client rejected the option of turning to American patent attorneys due to the high cost of their services. Choosing between domestic contractors and foreign ones, it was decided to turn to an Indian company, which on its glowing website guaranteed fast and high-quality work at a reasonable price. An application to the United States Patent and Trademark Office (USPTO) was drawn up and filed, and the appropriate fee was paid to the contractor.
More than a year later, our client received notice from an Indian company of the receipt of a preliminary rejection by the patent examiner. Because of incorrect marking on individual drawings of design elements, the rejection was based on noncompliance with the U.S. federal statutory consolidated codification clauses, namely 35 U.S.C.112:
- The specification must contain a written description of the invention, as well as the method and process of its manufacture and use in such complete, clear, concise and precise terms that any person skilled in the art to which it relates or to which it is closely related, could make and use the same, and should indicate the best way of carrying out the invention which the inventor or co-inventor envisages.
- The specification must conclude with one or more clauses that clearly indicate the subject matter that the inventor or co-inventor considers regards as the invention.
After the client applied to the 4B company, after analyzing all the documents, we concluded that the expert required compliance with the rules of drafting the drawings submitted for the examination of design applications. At the same time, the expert clearly described the shortcomings of the submitted drawings, gave examples and even roughly sketched the desired result on one of the examples. But our analysis in this story came somewhat later. At this stage, the client, although expressing dissatisfaction, continued to cooperate with Indian specialists.
After paying an additional approximately one quarter of the pre-paid fee, the inventor arranged with the contractor to have the drawings corrected and the answer sent to the USPTO by the same company.
Unfortunately for our client, almost six months after the mentioned response, the examiner sent a final rejection of the design patent. The most interesting thing about this final rejection was that the examiner pointed out the same flaws in the patent application that he had also reported in the first document sent.
Solving the problem
In November 2021, 4B’s lawyers took this patent application to work, despite the threatening word “final” next to the word “rejection.” The established rules for patent applications allow examiners at least three months from the date the final rejection was sent to submit a reasoned response. Looking ahead, those three months were not needed. The examination comments were quite transparent and understandable, although they required an engineering approach and knowledge of the patent procedures. That is, the work of our lawyers consisted in the following:
1. patent application analysis – study of design elements and relevant essential features;
2. analysis of the content of preliminary and final rejections of the examination – determining the possibility and scope of necessary corrections to ensure the requirements of patent applications for designs;
3. repeated communication with the previous contractor – an attempt to negotiate a gratuitous (in order to save client’s money) correction of mistakes of specialists who at the beginning of the application, for whose work has already been paid twice by the client and never received the desired result – to no avail, the company asked for more money;
4. correction of patent drawings with the assistance of 4B’s designer;
5. drafting a cover letter to the examination;
6. promptly sending materials to the responsible department of the USPTO;
7. processing of the USPTO response to the materials sent, and the payment of the patent issuance fee with the preparation of a special form for this purpose;
8. sharing the joy with the client:)
As you can see above from p.7 and p.8, we were able to correct the application, justify the corrections correctly, submit it in time, and get the 2022 decision to grant a U.S. design patent even after the final rejection by the patent examiner.
Of course, this is not always the case. Some such refusals (depending on their justification by the examiner) require special forms, requests for extension of examination, appeals to the Patent Trial and Appeal Board, etc. – All of these measures greatly increase the costs for inventors or applicants. In addition, a final rejection is a significant marker that the chances of obtaining a patent are approaching a minimum. But, as this case demonstrates, do not despair and say goodbye early on to investments already made in protecting intellectual property rights.
To avoid being held hostage to such probabilities, or to better manage the processes involved, it is necessary to keep the following in mind. A design patent in the U.S. is characterized by a much shorter textual description than an invention patent (utility patent). However, the drawings will receive most of the examination attention here, because they are the claims of such an invention, so:
- The USPTO imposes substantial requirements on the form and content of the drawings, which it is wise to examine before filing a patent application.
- The quality of the drawings is an equally important part of a successful examination, especially when filing electronically, where quality can be greatly reduced, and significant features (such as ornaments or holes) can be added to the design even spontaneously for technical reasons, which are not present in the original invention. Calling in a professional designer or designer to prepare high quality images would be a perfectly reasonable decision in this context.
- Writing forms, correctly numbering and describing drawings is a routine, but not a very easy task. Even for an incorrect signature, the USPTO may ask you to pay an additional fee. It is also a good idea to study the rules for drafting a patent application before filing it.
As for the presented case – of course, almost every player (especially from developing countries) in the market of intellectual property services wants to get more orders, more income and can position itself simultaneously, for example, as a specialist in trademarks, patents and copyright. But, as practice shows, not every intellectual property specialist understands or can understand a particular branch of technology and accordingly qualitatively present the essential features of the invention or design, which will distinguish the product among competitors and bring income to the right holder, in the foreground. The same works in the opposite direction – a specialist in industrial property will not always be able to qualitatively draw up, for example, a license agreement on the creation of a derivative work from the field of copyright.
Therefore, the main thing is that to reduce the level of stress associated with balancing deadlines and meeting stringent examination requirements, and consequently successfully navigate the complex process of patent examination, turn to specialists, with specific experience in working with industrial property, engineering backround opportunities to involve designers and designers, as well as prufriders and operate with a terminological dictionary to achieve high quality patent applications, reduce the further cost of patenting and by getting a patent.
If you have a need to register a patent or to resolve issues with preliminary denials of registration – contact us, the lawyers of 4B dive into each client’s case and find individual solutions.
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