Patent rejections are a common part of securing intellectual property (IP) for pioneering innovations, with most patent claims rejected at the first attempt. By anticipating these rejections, companies can streamline timelines and resources, bringing their innovations to market with fewer costly surprises.
What causes patent rejections?
As an integral part of the approval process, patent rejection is common. With the USPTO rejecting an estimated 86–90% of all patent applications, companies pursuing novel ideas will likely encounter rejections as they refine their claims. Understanding the reasons behind these rejections is essential to managing the process. More specifically, companies can strategise to prepare for US Code section 102 and 103 rejections.
US Code Section 102 rejection | US Code Section 103 rejection |
Indicates a lack of novelty where a single piece of prior art refers to each and every aspect of the claimed invention. | Indicates obviousness where the claimed invention would be obvious to a person with ordinary skill in the art; i.e., familiarity with the subject. |
By gaining a clear picture of the current IP landscape, companies can anticipate potential 102 and 103 rejections to address novelty and obviousness issues proactively. With strong, defensible filings, companies are better positioned to avoid unnecessary delays, streamlining their path to success.
The cost of unexpected patent rejections
Even when things go smoothly, the patent approval process is lengthy and costly. On average, for pharmaceutical, biotech, and chemistry patents, the time between filing a patent application and first action is 15 months. However, patent applications with rejections experience more office actions, resulting in thousands of dollars in additional costs and a longer journey to patent approval.
When targeting groundbreaking, competitive claims, the time and resources spent on revisions are expected, but being well prepared reduces avoidable delays. For small R&D companies, where budget overrun can be devastating, strategically anticipating and managing patent rejections is essential. Early IP ownership also provides a stronger position for protecting innovations and attracting investment, especially for startups and new ventures.
Proactive prior art searches
To mitigate potential 102 patent rejections, companies can take steps to prepare the best possible application from the start. Thorough prior art searches enable teams to confirm that an invention is novel and develop defensible claims based on full knowledge of the relevant IP landscape – remember: it takes an exhaustive search to prove your invention is truly new and unique, but it only takes one piece of prior art to disprove novelty.
A thorough background search can also identify additional potential innovation opportunities within your field. By closely monitoring the scientific literature, global and regional patent trends can be used to predict the next novel area of research.
Leveraging expert IP insight
When responding to patent rejections – especially complex Section 103 rejections, which may involve multiple pieces of prior art – expert guidance can make all the difference. Over 31% of Section 103 rejections are based on four or more references, complicating response strategies. Working with a seasoned patent researcher can help applicants to frame claims effectively and anticipate objections.
By collaborating with experts on your unique IP challenges, you can get the competitive advantage needed to file a successful patent application or streamline the reapplication process after a patent rejection.
Moving forwards with your application
Initial rejections are part of the process, with over 70% of patents rejected at first action receiving approval after revisions. The key is to start with the best IP insights possible and quickly adapt when rejection occurs.
With CAS’s IP solutions, you can access cutting-edge insights to observe market trends and increase the likelihood of a successful patent application.
CAS IP Services experts have deep industry experience and access to comprehensive resources to provide you with the reliable answers you need. By analysing relationships across sources, CAS searchers can identify problem areas and gaps in technology and existing patents where you are most likely to find success.
CAS’s STN IP Protection Suite brings you the most up-to-date and comprehensive IP information, enabling companies to anticipate challenges and prepare stronger applications.
