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What to Do When Your Patent Application Has Been Rejected


There are many reasons for patent rejection and in some cases it’s a simple matter of requiring more documentation or a better explanation of your work. However, there may be more complex matters causing your patent rejection that require the help of a California patent attorney.  

Patent Rejection and Patent Appeals 

When faced with a patent rejection after properly filing your application, you have the right to appeal the decision. Filing an appeal requires an official form from the U.S. Patent and Trademark Office along with the appeal fee. A written brief is also necessary, explaining your position against the rejection. 

Once filed, your patent rejection and appeal go before the Board of Patent Appeals and Interferences (BPAI). If necessary, an oral hearing may be held at the board’s request. A California patent attorney can help you with the drafting of your written brief and oral hearing. 

Board of Patent Appeals and Interferences 

The BPAI is made up of: 

  • The Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office;
  • The Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO;
  • The Commissioner for Patents; and
  • The administrative patent judges. 

A typical appeal will be heard by only 3 of these members. The BPAI is responsible for reviewing patent appeals filed in response to patent rejection and reviewing interferences to determine priority in the claim of an inventor trying to patent an invention already claimed by another. While most patent appeals can be resolved at this stage, another rejection at this stage means the inventor must take their patent appeals to the Court of Appeals for the Federal Court.  

Further Patent Appeals for Additional Patent Rejection 

If your first patent appeals do not return favorable results, you may file a civil action against the Director in the United States District Court for the District of Columbia. This is an action best taken with the help of a California patent attorney, as there are serious legal actions to deal with at this stage. The Court will review the records from the BPAI and determine to either reverse or uphold the BPAI’s decision. 

Continuation Application 

An alternative to patent appeals is filing a continuation application. This is basically a new application that requires a separate filing fee, but focuses on the parts of the original application that require further examination. The new application should focus on the claims and evidence for which further consideration was desired in the patent rejection notice. 

Hiring a California Patent Attorney 

Obtaining proper guidance during the resolution of your patent rejection is crucial to saving you time and money. You may need help in deciding whether patent appeals or a continuation application is appropriate to resolve your patent rejection. Or you may require assistance with parts of the appeals process, which can involve court hearings and testimony. 

A California patent attorney from the Adli Law Group P.C. is experienced in helping clients file their patent applications correctly to avoid common rejection reasons. In the event your properly filed application is still rejected, our attorneys can help you determine the best course of action for an appeal. Contact us today for experienced help with protecting your trademarks – 213- 290-4933.

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