Most Common Design Patent Application Rejections -Menteso IP
patent application rejections
11 Mar, 2022 0 Menteso Editorial Team

Most Common Design Patent Application Rejections

Getting a patent application rejections is nobody would wish. After investing time to develop a design patent application that is focused, novel, and specific, you are told to revise your hard work and have another go at your application. This leads to alterations and continuation procedures to create related applications.

When you get rejected patent application , you will have to spend more time and money to address the issues raised by the United States Patent and Trademark Office (USPTO). You can save yourself this extra time, expense, and frustration by bypassing the errors that trigger a patent rejection.

The entire process is considerably complicated by the number of patent application rejection types. Patent examiners consider whether an invention is eligible, useful, novel, and enabled. If any of these descriptors don’t apply, then the examiner can request you for an edit. 

Rejections that are most likely to impact your patent application- 

  • 102 (lack of novelty)
  • 103 (the claimed invention is obvious)
  • 112b (lack of adequate description)

Let’s take a look at each of these patent rejection types:

  1. 102 Rejections

To obtain a design patent on an invention, one of the legal requirements under USPTO is that your invention must be new or novel. A design patent application may be rejected if a single prior art reference matches every element of a patent application’s claim.

  1. 103 Rejections

Under this rejection, a patentable invention must be a non-obvious improvement over the prior art which means the examiner considers the invention at issue to be obvious.

  1. 112(b) Rejections

Under this section, the specification shall close with one or more claims, especially pointing out and distinctly claiming the subject matter which the inventor regards as the inventive idea. The USPTO has interpreted this section as imposing two requirements: 

(A) The design patent claims must set forth the subject matter that the inventor regards as their inventive idea.

(B) The claims must especially point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant which means patent claims must clearly define the subject matter of the claims for your patent.

Other reasons why design patent applications get rejected:

1. Invention Is Obvious

 For the patent community, the term obvious refers to an objective test. It means that a single reference or several prior references render your invention obvious which means your claimed elements are also found in a prior application. There is a reason to connect those components and form your invention. 

2. Invention Is Not Novel

It refers to how unique your invention is. For your patent invention to be novel, there should be no prior mention, disclosure, application, product, or article that uses your invention or components of it. It becomes a question when your invention is too similar to something that has already been done before. Novelty and obviousness of the patent are not the same things. The novelty of the patent relies on a single reference for patent application rejection, while obviousness can use a combination of references to build the patent application rejection.

3. The Design Patent Application is generated Incorrectly

This patent rejection is why hiring an expert legal team is so important for patent application filing. When you file your patent application yourself, you are a pro se applicant. You set yourself up for rejection by applying for the patent. If you don’t represent your claim correctly, you will receive a rejection. Here are some pitfalls that patent applications fall into and trigger a rejection for patent application:

  • Discussing element not properly introduced
  • Directing the reader to material not presented in the written description
  • Directing to material, not in the patent drawings
  • Inconsistent use of terms
  • Not written in proper dependent form
  • Fall into one of the many pitfalls that are the minefield of patent application requirements, and you risk rejection, expensive surcharges, or a delay in your design patent application.

4. Non-Patentable Subject Matter Of The Application

This isn’t a common rejection, but it will be very difficult to overcome if you get it. You can patent almost anything, but there are some things that you can’t patent. For example:

  • Physical phenomena
  • Living things
  • Mathematical equations
  • Discoveries
  • Abstract Ideas
  • Method of medical treatment

You can save a lot of frustration by working with an experienced patent attorney from the beginning of your journey for a patent. They can explain the possibility of you being successful if you want to patent your invention that falls into a category on this list.

5. Issues with the Patent Drawings

There was a time when patent application drawings had a very strict set of rules and regulations they needed to obey. Despite those rules and regulations loosening, there are still several ways your patent drawing application can create problems. Do not use colors, shading, or greys in drawings. These can lead to the rejection of your design patent application. You also need to have the clearest drawing possible with no smudges, blurry lines, or stray marks. The purpose is to have the highest degree drawing possible when your design patent gets published. Because of this, even perfectly accurate drawings with grey lines that look black will get rejected. 

Have Your Patent Application Approved

As you can see, there are many traps you can fall into when creating your design patent application. The best way is to work with an experienced legal team that has the skills to create your error-free patent application.