By Thom Kobayashi ‑ February 25, 2019
The patent application process is demanding. It can be hard to appreciate just how much rigour and clarity is required from both the applicant and examiner to get on the same page. Indeed, before a patent can ever be granted, both parties must come to complete agreement about exactly what the invention is and how it differs from existing inventions. It’s no simple feat.
Throughout the process, the examiner raises questions and objections to novelty, obviousness, patent eligibility and clarity of description by “citing” either the application itself or related art. While all this information (known as rejection data) is part of the public record, and while examiner opinion is highly regarded, digging through and aggregating that data has historically proven too cumbersome and impractical to be used other than when absolutely necessary.
Reviewing file histories is valuable because it reveals all the back and forth between the examiner and applicant, putting the patent into context so that you can understand the scope of what's claimed. The biggest part of the history is the objection art that’s presented, specifically discussed, and differentiated for the examiner.
Reviewing the record has historically been a patent-by-patent process, during which an expert opens and reads the file history and puts it into layman’s terms for the rest of us, sometimes noting particularly interesting patents for review. Although the full references list is available through the citations, it isn’t always clear which patents were specifically discussed and which patents were simply part of the list unless you read the record. Because of how the process works, it’s possible that the objection art’s owner might never know their patent is being widely presented within their industry and is blocking patent activity by their competitors and others.
Consider the value of already having patent protection on things that others are now trying to develop and protect for themselves. Would knowing you have that protection affect your decision about an asset’s renewal? Could this knowledge help you to find a collaborator with whom to share development costs or give you extra leverage at your next commercial discussion? In addition, the examiner’s third party expert opinion can add a lot of value to the patent should it ever be used in licensing or offered for sale.
Imagine if you could quickly and easily access that data to predict and generate insight into potential questions and objections. To make this possible, indexed rejection data has been added to the cleansed, correlated database made available using CPA Global’s Innography® IP intelligence software. This data enables users to perform simple, easy, useful analysis for understanding both individual patents and overall portfolios. That, in turn, comes with several benefits.
Examiners reject patents for specific reasons, such as novelty, obviousness, subject matter eligibility or a poorly defined idea. An initial rejection, however, doesn’t mean the application process is over. As a responding applicant, it can be useful to review your examiner’s record to understand arguments that have been persuasive in the past. Anticipating particular objections can lead to better-crafted and broader claims that result in less back and forth with the PTO.
Let’s say, for instance, your application is in the prosecution phase. What if the examiner has issued a rejection for ineligible subject matter? You disagree, so you decide to pursue the matter further.
Using the rejection data available in Innography, you can research all the such rejections from your specific examiner to identify patterns, such as which arguments are most likely to prove effective with that specific examiner. Knowing this can help you select the proper arguments to improve your chances of success.
Additionally, with a one-click analysis, you can instantly see the rejection art presented to the applicants for any set of patents in which you’re interested. Imagine being able to tap into the opinions of experienced examiners across the entire landscape of a new technology.
Since the prosecution history of a patent remains on record throughout its life, the associated rejection data can also inform your patent portfolio strategy.
Consider, for instance, you discover your patents have been presented to your competitor by the examiner as cause for rejection based on lack of novelty, in response to recent filings. Simply understanding who your IP is blocking could jump-start a licensing or selling discussion of high commercial impact. In a broader sense, you can identify when your competitor is actively developing technology similar to yours, along with their intentions and future direction in the space. Also, examiner opinions might indicate that an asset may have stand-alone market value and be worthwhile maintaining as an active asset.
Rejection data can also save you time and resources from a research and development (R&D) standpoint.
The technology overlap discussed above cuts both ways. Using rejection data, not only can you see where competitors are encroaching on your technology space, but also whether you are drifting towards theirs. Knowing this can help focus your R&D spend.
From a strategic standpoint, it may show value in continuing to file and prosecute a patent family, even though you’re moving away from a particular technology if only to drive competitors to more complicated solutions.
The examination process has always provided insight for understanding the coverage of individual patents. No one can credibly claim to understand a patent’s scope without that all-important context. Now, that same lens is available for portfolios. Looking at that same data in the context of a portfolio can grant some real understanding of both where you stand today and how to move forward.
Rejection data 101
Understanding how to use rejection data from any jurisdiction first requires understanding the different rejection categories. For this blog, we’ve focused on U.S. patent law, specifically the rejection categories defined by the U.S. Patent Act in sections 101, 102, 103 and 112. Of course, even under each individual category, there are multiple reasons and types of patent rejections. For our purposes, however, let’s focus on the most basic definitions.