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Dealing with Rejection: Overcoming 101, 102, 103, and 112

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Manage episode 465272768 series 2895650
Content provided by Aurora Patent Consulting | Ashley Sloat, Ph.D. and Aurora Patent Consulting | Ashley Sloat. All podcast content including episodes, graphics, and podcast descriptions are uploaded and provided directly by Aurora Patent Consulting | Ashley Sloat, Ph.D. and Aurora Patent Consulting | Ashley Sloat or their podcast platform partner. If you believe someone is using your copyrighted work without your permission, you can follow the process outlined here https://ppacc.player.fm/legal.

So, your patent application got rejected. Now what?

In this month’s episode, we’re talking about rejection. Specifically, the type that comes from the patent office in the form of an intimidating sounding three-digit number when your application gets denied by an examiner.

Some time after submitting your application, it goes into a process with the patent office called examination. This is the part of your patent’s prosecution journey where an examiner reviews your application for conformance to technical and legal requirements. If – and usually when – the examiner finds a problem, they will issue an office action that contains specific reasons for the rejection. You then have the opportunity to respond to and overcome the rejection, using various strategies we’ll explore today.
Reasons for rejection fall under four sections of U.S. Statute, Title 35. Sections 101, 102, 103, and 112 dictate that patents must be eligible, useful, novel, nonobvious, and enabled (or properly described). Patents can be rejected or later invalidated if one or more of the claims are determined to be otherwise.

Rejection on the basis of these four statutes is fortunately just the beginning of the delicate process of negotiating this important exchange that has promoted and enabled our innovation economy since the dawn of our country. Patent application rejection is common, expected, and can be used very strategically – but perhaps counterintuitively – to end up with the broadest possible protection, while also making sure there’s something in it for the public!

** Episode Overview **
In today’s episode, Patent Office Relationship Guru Daniel Wright leads a discussion with our all-star patent panel, delving deeply into defining, coping with, and then dealing with patent application rejection. Along the way, Dan and the panel discuss:
⦿ Why patent applications are rejected.
⦿ The specific types of rejection.
⦿ Strategies for how to overcome each, including some wonderful insider insights specifically on how to work with examiners on the human level to overcome rejection.
** Mossoff Minute: Patents Aren't Monopolies **
In this month’s minute, Professor Adam Mossoff debunks the myth that patents in the United States are monopolies that impede innovation and block economic growth.

** Referenced Links **

⦿ Apply to work at Aurora: https://www.aurorapatents.com/careers-patent-agent.html
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/patent-anatomy-whats-in-a-patent

** Follow Aurora Patents **
⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Let us know what you think about this episode!

  continue reading

Chapters

1. Intro (00:00:00)

2. Patent agent hiring announcement! (00:04:08)

3. ParkerVision interview announcement (00:04:50)

4. Mossoff Minute: Patents aren't monopolies (00:05:28)

5. Rejection discussion panel intro (00:07:43)

6. Overview: Patent application rejection (00:08:44)

7. Arriving at patent examination (00:09:18)

8. Office actions: allowance vs rejection (00:11:16)

9. Rejections are common! (00:13:36)

10. Non-final vs final rejection (00:14:57)

11. Request for Continued Examination (00:15:21)

12. Double non-finals? (00:15:54)

13. §101 – Eligible Subject Matter (00:20:54)

14. Abstract ideas (00:22:20)

15. Laws of nature (00:23:54)

16. Natural phenomena and products of nature (00:25:19)

17. Overcoming Section 101 rejection (00:26:30)

18. §101 – Utility (00:28:52)

19. §102 – Novelty (00:33:29)

20. Overcoming Section 102 rejection (00:36:16)

21. §103 – Non-obviousness (00:46:19)

22. Overcoming Section 103 rejection (00:48:03)

23. §112 – Enablement (00:59:46)

24. Overcoming Section 112 rejection (01:01:35)

25. Claim tactics and the big picture (01:04:37)

26. Outro (01:15:41)

44 episodes

Artwork
iconShare
 
Manage episode 465272768 series 2895650
Content provided by Aurora Patent Consulting | Ashley Sloat, Ph.D. and Aurora Patent Consulting | Ashley Sloat. All podcast content including episodes, graphics, and podcast descriptions are uploaded and provided directly by Aurora Patent Consulting | Ashley Sloat, Ph.D. and Aurora Patent Consulting | Ashley Sloat or their podcast platform partner. If you believe someone is using your copyrighted work without your permission, you can follow the process outlined here https://ppacc.player.fm/legal.

So, your patent application got rejected. Now what?

In this month’s episode, we’re talking about rejection. Specifically, the type that comes from the patent office in the form of an intimidating sounding three-digit number when your application gets denied by an examiner.

Some time after submitting your application, it goes into a process with the patent office called examination. This is the part of your patent’s prosecution journey where an examiner reviews your application for conformance to technical and legal requirements. If – and usually when – the examiner finds a problem, they will issue an office action that contains specific reasons for the rejection. You then have the opportunity to respond to and overcome the rejection, using various strategies we’ll explore today.
Reasons for rejection fall under four sections of U.S. Statute, Title 35. Sections 101, 102, 103, and 112 dictate that patents must be eligible, useful, novel, nonobvious, and enabled (or properly described). Patents can be rejected or later invalidated if one or more of the claims are determined to be otherwise.

Rejection on the basis of these four statutes is fortunately just the beginning of the delicate process of negotiating this important exchange that has promoted and enabled our innovation economy since the dawn of our country. Patent application rejection is common, expected, and can be used very strategically – but perhaps counterintuitively – to end up with the broadest possible protection, while also making sure there’s something in it for the public!

** Episode Overview **
In today’s episode, Patent Office Relationship Guru Daniel Wright leads a discussion with our all-star patent panel, delving deeply into defining, coping with, and then dealing with patent application rejection. Along the way, Dan and the panel discuss:
⦿ Why patent applications are rejected.
⦿ The specific types of rejection.
⦿ Strategies for how to overcome each, including some wonderful insider insights specifically on how to work with examiners on the human level to overcome rejection.
** Mossoff Minute: Patents Aren't Monopolies **
In this month’s minute, Professor Adam Mossoff debunks the myth that patents in the United States are monopolies that impede innovation and block economic growth.

** Referenced Links **

⦿ Apply to work at Aurora: https://www.aurorapatents.com/careers-patent-agent.html
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/patent-anatomy-whats-in-a-patent

** Follow Aurora Patents **
⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/

Let us know what you think about this episode!

  continue reading

Chapters

1. Intro (00:00:00)

2. Patent agent hiring announcement! (00:04:08)

3. ParkerVision interview announcement (00:04:50)

4. Mossoff Minute: Patents aren't monopolies (00:05:28)

5. Rejection discussion panel intro (00:07:43)

6. Overview: Patent application rejection (00:08:44)

7. Arriving at patent examination (00:09:18)

8. Office actions: allowance vs rejection (00:11:16)

9. Rejections are common! (00:13:36)

10. Non-final vs final rejection (00:14:57)

11. Request for Continued Examination (00:15:21)

12. Double non-finals? (00:15:54)

13. §101 – Eligible Subject Matter (00:20:54)

14. Abstract ideas (00:22:20)

15. Laws of nature (00:23:54)

16. Natural phenomena and products of nature (00:25:19)

17. Overcoming Section 101 rejection (00:26:30)

18. §101 – Utility (00:28:52)

19. §102 – Novelty (00:33:29)

20. Overcoming Section 102 rejection (00:36:16)

21. §103 – Non-obviousness (00:46:19)

22. Overcoming Section 103 rejection (00:48:03)

23. §112 – Enablement (00:59:46)

24. Overcoming Section 112 rejection (01:01:35)

25. Claim tactics and the big picture (01:04:37)

26. Outro (01:15:41)

44 episodes

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