QUESTION

What are my options if my patent application was rejected by the US Patent and Trademark Office?

Asked on Apr 10th, 2015 on Patents - California
More details to this question:
Would it help to have an attorney review my patent? I think that I might stand to make a considerable amount of money.
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5 ANSWERS

Acquisitions Attorney serving Lincoln, NE at Jayne L. Sebby
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You don't provide enough details to answer this question. However, if you submitted the patent application yourself, without any help from a patent attorney or patent agent, my first two guesses would be that a) your idea is not patentable under current law or b) your application was not filled out properly. You can appeal the patent examiner's decision but there's no guarantee that the Board will reverse the examiner. Talk to a patent attorney about what to do next.
Answered on Apr 13th, 2015 at 1:08 PM

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Appellate Litigation Attorney serving Boston, MA at Banner & Witcoff, Ltd.
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Rejections are a typical part of patent prosecution. You normally have three months to file a response to a rejection or two months for a restriction action. You need a patent attorney to review the case and give you guidance. Making money on an invention requires a granted patent and sale of your product. Best of luck !
Answered on Apr 13th, 2015 at 1:03 PM

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Intellectual Property Attorney serving Southfield, MI at Gerald R. Black
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The sole purpose in filing a Patent Application is to obtain all of the patent protection that the inventor is entitled to. Merely obtaining a Patent is not enough. The inventor may soon discover that a competitor has taken the essence of the invention without infringing the issued Patent. Of course, generally, the likelihood of obtaining any Patent is enhanced with the effective assistance of Counsel. It is strongly recommended that you consult with Counsel about the Office Action before responding to the Office Action. Good luck with your program.
Answered on Apr 13th, 2015 at 12:51 PM

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Intellectual Property Attorney serving South Jordan, UT at Pearson Butler
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The US Patent Office rejects almost every application, so just expect it. It would help a lot for you to consult with a patent attorney. The rejections are written very persuasively and will often look like there is no hope, but they often have logical, legal and factual errors in them that you can use to get past them. However, if you wrote your own application, there are likely to be some very serious issues, some of which possibly can not be fixed.
Answered on Apr 13th, 2015 at 3:53 AM

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It is common to have claims rejected. In response to a claim rejection, you may 1) argue reasons why the claim should not have been rejected, 2) amend the claim and/or argue based on the amended claim, and/or 3) draft (a) new claim(s). There are many other strategies as well, they are too numerous or complex to list here. It sounds as if you are not experienced in patent prosecution. If the prospective patent rights appear to be valuable and you can afford to hire an experienced patent attorney who has a background in your subject area, you should definitely do so. Having an attorney can easily make the difference between obtaining a patent or not, as well as having claims that will be valuable and enforceable. I strongly recommend selecting an attorney based on the attorney's understanding and proficiency in your subject matter and prosecution experience, rather than looking for the lowest rate. The attorney's skill and knowledge can have a huge impact on the end result.
Answered on Apr 10th, 2015 at 4:47 PM

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