Patents are crucial for inventors to protect their inventions and are an effective way to ensure innovation in the country. However, receiving a rejection on initial patent claims is a relatively frequent outcome. According to the Corporate Statistics compiled in the Annual Report 2014-2015, out of the 37,526 patent application filed in the year 2015, 28,776 were submitted for re-examination.
The reasons for receiving a rejection on your patent claim can be widely varied, depending on the field of application for your invention and the frequency of innovation in that particular field. The examiner may find a pre-existing claim or publication with one or more features similar to your application or it might be tricky to establish the novelty of your invention. However, most of these claims can be re-evaluated and reapplied for a patent.
Here’s a closer look at the steps to manage rejected patent claims:
It is important to consult a patent agent as soon as you receive a Patent Office Action on your claim. An experienced Intellectual Property (IP) agent evaluates the objections included in the action and helps to determine the right strategy for your product. Depending on the objections listed in the action, your IP lawyer can help you determine whether to redress these objections or abandon the application completely.
2) Evaluate the Objections
Depending on the novelty and the utility of your invention and the accuracy with which you have filed your patent claim, you may receive an approval or a Patent Office Action from the Patents Department at the Canadian Intellectual Property Office (CIPO).
A Patent Office Action is an official record of the objections that a patent examiner has regarding your claim and also includes a designated date till which you can submit amendments to the claims and appropriate arguments. Evaluate the objections prudently with your IP agent to file an effective response to the Office Action. The objections may be resolved by correcting, adjusting or cancelling the claims mentioned in your patent application.
3) Revise the Application
Any responses to the Office Action need to be addressed to the office of Commissioner of Patents. It is important to file your amendment letter carefully with the help of your patent agent to avoid further objections. The response needs to respond to each and every objection listed by the examiner.
Your patent agent helps you describe your invention with more clarity and makes sure you include the features and the benefits that enhance the novelty of your product. In cases, you want to make further changes to your invention, the agent can also help you revise the application accordingly or file a new claim altogether.
4) Assess the Reconsiderations
After the filing of your response, the application will be re-evaluated by the patent examiners. Depending on the status of your claim, CIPO may issue a Second Office Action setting out objections based upon your amendments. If the Examiner believes that your amendments are acceptable, you may receive a ‘Notice of Allowance’ permitting your application.
In the event that additional revisions are required in your application, you may receive an official letter or a direct call from the patent examiner. This communication may continue until you receive approval or final rejection on your claim.
The process of managing rejected patent claims can be complex for most patent owners and can also lead to a complete refusal of your application if not handled correctly. Consult a patent agent to assist with the filing of any responses or corresondence with CIPO.