What are the grounds for refusal in a Notification of Refusal?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

According to MPEP 2920.05(a), the grounds for refusal in a Notification of Refusal may include:

• Rejections based on conditions for patentability under title 35, United States Code, such as:
  • 35 U.S.C. 171 (design patent)
  • 35 U.S.C. 102 (novelty)
  • 35 U.S.C. 103 (non-obviousness)
  • 35 U.S.C. 112 (written description, enablement, definiteness)
• Requirements for restriction (where more than one independent and distinct design is presented in the application)
• Objections (where not prohibited by Article 12(1) of the Hague Agreement)

The MPEP also notes: “Objections based on requirements relating to the form or content of the application provided for in the Hague Agreement and Regulations thereunder are not prohibited by Article 12(1) where the International Bureau is not responsible for verifying compliance with such requirements.”

Additionally, grounds for refusal may be based on applicant’s actions taken prior to examination, such as cancellation of industrial designs by amendment or express abandonment of the application.