When you (the inventor) submit an application to the United States Patent and Trademark Office (USPTO) for a design or utility patent, an examiner will review it and usually send a response – most often an Office Action. (It’s rare for a patent application to not get at least one Office Action.) An Office Action is a communication where the examiner rejects some or all parts of your application. You then have the option to respond and either argue that the rejection is incorrect or draft changes which narrow the scope of the patent. If the examiner does not accept your response, and/or if you don’t submit a timely response, your patent application will be declared “abandoned.” (There are ways to try to revive the application at this point if you desire – talk with your patent attorney for more information.)
How to Kill a Utility Patent
A utility patent is used to protect inventions and processes. When you submit an application for a utility patent, you must submit sufficient information that would enable another person to build your invention or use your process. Your application must state what aspects of your invention or process you’re claiming as part of your patent because the USPTO can only grant a patent for things that are new and non-obvious. If what you want to patent is in the “prior art” (aka was previously invented), the USPTO will not grant a patent until you change your application to remove any claims that include the prior art.
The most common reason the USPTO rejects an application for a utility patent is because they determine that all the claims in your applied-for process or invention already exists. If you removed all the claims that contain prior art, there would be nothing left. (You have the option to respond that your claims are sufficiently different than the prior art.) This often happens for one of the following reasons:
- You opted not to do a full patent search prior to filing the application, or
- The claims that you thought were new and non-obvious were actually contained in a provisional patent application.
The claims in provisional patents are not available when conducting a patent search; however, the USPTO may consider the information in an earlier-filed provisional patent application when evaluating a patent application.
How to Kill a Design Patent
A design patent is used to protect the new and nonobvious visual ornamentation of a manufactured item. When you submit a design patent application, you must provide drawings that show the subject matter and scope of your desired patent.
The most common reason why a design patent is rejected is because you did not provide sufficient images of your design. The USPTO goes over these drawings with a metaphoric fine-toothed comb, examining every smudge and pixel. The examiner may reject the application if anything is slightly ambiguous or misprinted. You may have to work with a professional draftsman to provide corrected images or your application may not be granted by the USPTO.
Applying for patent is a long process, which may take years and several exchanges with the USPTO to complete it. If you need any help with your patents or other intellectual property, please send us a message. We have lawyers licensed in Arizona, Connecticut, and New York, and we can handle federal intellectual property matters in any U.S. state and assist with international matters. We would be happy to discuss your patent ideas and the expected fees based on your specific situation. For even more information, be sure to connect with us on Facebook.
Post written and edited by social media attorney Ruth Carter.