What To Do If Your Patent Application Is Denied

After months and possibly years of hard work on your patent application, you may receive what is known as an “office action” by the U.S. Patent and Trademark Office (USPTO). This does not mean your invention is without merit. The USPTO’s three most common reasons for issuing office actions for patent applications are:

  1. The patent application contains certain “informalities” in language or presentation that violate minor rules of the patent process.
  2. The invention does not meet the patent office’s criteria for novelty.
  3. The invention does not meet the patent office’s criteria for obviousness.

At Frisina, LLC, our lead attorney, Dominic A. Frisina, has handled hundreds of patent cases and can offer wise counsel about how to respond to an office action. We are based in Cleveland and serve much of northeast Ohio but can work with any client interested in obtaining an American patent.

Appealing Your Office Action

If your application is rejected via an office action, you have the right to argue your case and potentially to appeal this decision. Your lawyer can help you answer the office action and appeal to the Patent Trial and Appeals Board if necessary. If this appeal is not successful, you may still have options in the U.S. courts.

The appeals process can be complicated. It is not a situation where a “do it yourself” approach is frequently victorious. Our firm has guided hundreds of inventors through the appeals process, and we can help you discover the best strategy for arguing the merits of your application.

Back To The Drawing Board With A Continuation Application

Another option to consider if your patent application is challenged is to file what is called a “continuation application.” This document does not challenge the office action; rather, it reshapes the original application to deal with objections, while retaining the earlier filing date for the original (or parent) application. This may be a good option in cases where the inventor originally attempted to write his own application. Our firm can help you determine if this strategy might be the most productive use of your time and energy.

We Protect Your IP Interests Throughout The Entire Patent Application Cycle

Our firm stands by your side during the arduous patent application process and fights to protect your intellectual property. Call us at 440-600-1992 today for an introductory appointment, or reach out to us using our online intake form.


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