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What to Do if Your Patent Application Is Rejected

Fri Apr 29th, 2022 by  Patents

No one wants their patent application to be rejected by the United States Patent and Trademark Office (USPTO). However, patent application rejections are extremely common, with the overwhelming majority of patent applications being rejected at least once. While a rejection is certainly a bump in the road, it is not the end of the story. If your patent application has been rejected by the USPTO, an Alabama patent attorney can help you overcome it. 

The Basics of Patent Prosecution 

The most important thing to know about patent application rejections is that they are not the final word on whether you will be granted a patent or not. During the patent prosecution process, the applicant submits an application for examination by the USPTO. The examiner in most cases will then reject the application, explaining his or her reasons for doing so, and giving the applicant an opportunity to amend the application. The examiner may then issue subsequent rejections, culminating with the “final rejection.” However, a “final rejection” is not really final — it is merely the first step in the next phase of patent prosecution. 

Option 1: File a Request for Continued Examination 

One of the most common strategies to reopen prosecution after a final rejection is to file a Request for Continued Examination (RCE). An RCE essentially continues the prosecution process and allows the applicant to continue pressing his or her case as to why the patent should be granted, as well as making further amendments to the claims. There is no limit to the number of RCEs an applicant can file, but the filing fees for RCEs can get costly. 

Option 2: Use the After Final Consideration Pilot 2.0 Program 

Under the After Final Consideration Pilot 2.0 Program (AFCP), the applicant is allowed to file one non-broadening claim amendment, while the examiner is given a certain amount of time to conduct a prior art search and consider the amendment. The process often involves an interview between the examiner and the applicant. The AFCP program may be an advantageous strategy if you would like to make relatively minor changes to your patent application after a final rejection.

Option 3: Appeal to the Patent Trial and Appeal Board

If your patent application has been rejected at least twice and you believe that your examiner issued the rejections due to a legal or technical error, a last-resort option is to appeal the rejection to the Patent Trial and Appeal Board (PTAB). At the outcome of the appeal, the PTAB may sustain the examiner’s rejection, allow the application, or order the examiner to reopen prosecution. While successful appeals can be big wins for applicants, the appeals process is lengthy and expensive. 

Contact an Alabama Patent Attorney for More Insights 

A rejection — even a “final” one — is not the end of the road. If your patent application has been rejected by the USPTO, you have options. For more information about post-final rejection strategies, please contact an Alabama patent attorney at AdamsIP by calling 251-289-9787 or by using our online contact form. We assist clients throughout the state including Mobile, Huntsville, and Birmingham.