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Patent Rejection – What it takes to get a patent issued

Your patent will typically be rejected by the examiner. Do not worry.

The back-and-forth process between the examiner and applicant is a necessary part of getting a strong patent allowed. We want the examiner to fully understand the invention and do a competent job of searching. If the examiner does a poor job, your patent will not withstand attack.

The strongest patents are those that are very well searched and where the examiner does a very thorough job. These patents will withstand Inter-Partes Review and lawsuits, and these patents will be strong business assets throughout their lives.

In a rejection, the examiner will cite references which are typically other patents and sometimes “Non-Patent Literature”. In the Office action, the examiner will explain how the references show the features of your claims. Sadly, many of the examiners use a lot of shorthand notation and not a lot of verbose explanation, and this can seem hard to understand and quite daunting.

In some cases, the examiner may be wrong. The examiner may not fully appreciate the nuance of your invention, or the examiner may not fully understand the references. We must then politely yet persuasively argue the proper interpretation.

In some cases, the examiner may be right. We might amend the claims to get around the references, which may narrow the invention. In some cases, the narrowed claims may not have much business value and the patent application may be abandoned.

The industry average is between 4 and 5 Office actions *on average*. Some cases will have many, many more Office actions, and some will have fewer. BlueIron’s financing smooths these costs into flat, predictable expenses so that you will never have to fret about paying the patent attorney for yet another response to Office action.