As a patent attorney, I see all types of rejections over my 20+ years dealing with the patent office. In general, depending on time frame, the USPTO rejects between 86% to 90% patent applications. If your patent application is rejected, you will need to spend more money and time to resolve the USPTO’s issues. Avoid making mistakes that could lead to rejection and save yourself the frustration, time, and expense. Read on to find statistics on USPTO rejection types.

Common USPTO Patent Rejections

  1. Obviousness: The patent office will conduct a search for prior art, which is any previous disclosure of the invention or similar invention. If prior art is found, the patent application may be rejected.
  2. Lack of novelty: The invention must be new and non-obvious in order to be eligible for a patent. If the invention has been previously disclosed or is already in use, the patent application may be rejected.
  3. Inadequate disclosure: The patent application must include a detailed and complete description of the invention and how it works. If the application is lacking in detail or is unclear, the patent office may reject the application.
  4. Non-patentable subject matter: The invention claims laws of nature, physical phenomena, abstract ideas, and natural products. This rejection is commonly applied against software and biotech inventions.
  5. Lack of utility/usefulness: The invention must also have some kind of practical utility or function in order to be eligible for a patent. If the invention is deemed to be frivolous or not useful, the patent application may be rejected.
  6. Inadequate drawings: Patent applications should include detailed drawings or illustrations of the invention. If the drawings are incomplete or unclear, the patent office may reject the application.
  7. Lack of enablement: The patent application must disclose enough information for a person having ordinary skill in the field to make and use the invention. If the application does not provide sufficient information for this, it may be rejected.
  8. Improperly formatted application: The patent office has strict guidelines for the format and content of patent applications. If the application does not meet these guidelines, it may be rejected.
  9. Lack of best mode: The patent application must disclose the best mode of carrying out the invention. If the application does not include this information, it may be rejected.

The top 3 rejection types (103, 102 and 112) account for 81%, 45%, and 13% for the period between January 2021 to January 2023 according to the USPTO as follows:

Obviousness Rejection under Section 103

An obviousness rejection is issued when the patent office determines that an invention would have been obvious to a person of ordinary skill in the field at the time the invention was made. This can occur when the invention is an obvious combination of existing technologies or when the invention is a slight variation of something that already exists.

For an invention to be considered obvious, the prior art must teach or suggest the claimed invention, and a person of ordinary skill in the art would have been able to make the invention without any undue experimentation.

The patent office will conduct a search for prior art and examine it to determine whether the invention would have been obvious to a person of ordinary skill in the field. The prior art can include patents, published patent applications, non-patent literature, and other publicly available information.

Examples of prior art that can be used to reject a patent application for obviousness include:

  • Patents or published patent applications that describe the same or similar invention
  • Journal articles, books, or other publications that describe the invention
  • Products or services that are already in the market and that use the same or similar technology
  • Public demonstrations or presentations of the invention

It’s worth noting that a rejection for obviousness is not the end of the process, the applicant can make revisions to the application and resubmit it, or can argue against the rejection by showing that the prior art is not relevant or that the invention is not obvious.

Novelty Rejection under Section 102

A novelty rejection is issued when the patent office determines that an invention is not new or novel and therefore not eligible for a patent. This can occur when the invention has been previously disclosed or is already in use.

The patent office conducts a search for prior art, which is any previous disclosure of the invention or similar invention. If prior art is found, the patent application may be rejected. Prior art can include patents, published patent applications, non-patent literature, and other publicly available information.

Examples of prior art that can be used to reject a patent application for lack of novelty include:

  • Patents or published patent applications that describe the same or similar invention
  • Journal articles, books, or other publications that describe the invention
  • Products or services that are already in the market and that use the same or similar technology
  • Public demonstrations or presentations of the invention

It’s worth noting that a rejection for lack of novelty is not the end of the process, the applicant can make revisions to the application and resubmit it, or can argue against the rejection by showing that the prior art is not relevant or that the invention is still novel.

Inadequate Disclosure under Section 112

Inadequate disclosure of an invention refers to the failure to provide enough information about the invention in a patent application. In order to be granted a patent, an invention must be fully and adequately disclosed to the public. This includes describing the invention in enough detail so that someone skilled in the field would be able to understand and replicate the invention. If the disclosure is not adequate, the patent may be considered invalid or unenforceable.

Non-Patentable Subject Matter Rejection under section 101

A non-patentable subject matter rejection is a type of rejection issued by a patent office when an invention is determined to be not eligible for patent protection. This can occur when the invention falls under one of the categories of subject matter that are specifically excluded from patentability under the patent laws. These categories can include laws of nature, physical phenomena, abstract ideas, and natural products. Additionally, certain types of inventions, such as methods of medical treatment, are also not considered patentable subject matter. If a non-patentable subject matter rejection is issued, the inventor may need to revise the application or argue for why the invention should be considered patentable.

Lack of Utility rejection

A lack of utility rejection is a type of rejection issued by a patent office when an invention is determined to not have a practical use or benefit. In order to be patentable, an invention must have a specific, substantial, and credible utility. This means that it must serve a useful purpose and be capable of performing the function for which it was intended. If a patent office determines that the invention does not have utility, the patent application may be rejected. To overcome this type of rejection, the inventor may need to provide evidence of the invention’s utility or make changes to the invention to establish its usefulness.

Inadequate Drawing Rejection

An inadequate drawing rejection is a type of rejection issued by a patent office when the drawings accompanying a patent application are not considered to be clear or complete enough to understand the invention. Drawings are often used to supplement the written description of an invention and are especially helpful for understanding inventions in certain fields such as mechanical and electrical engineering. If a patent office determines that the drawings in an application are inadequate, the patent application may be rejected. To overcome this type of rejection, the inventor may need to provide additional or revised drawings to clearly and fully depict the invention.

Lack of enablement

A lack of enablement rejection is a type of rejection issued by a patent office when an invention is determined to not be fully and clearly described or enabled in the patent application. In order to be patentable, an invention must be fully and clearly described in the application so that someone skilled in the field can understand and replicate the invention. If a patent office determines that the invention is not enabled, the patent application may be rejected. To overcome this type of rejection, the inventor may need to provide additional information or examples in the application to demonstrate enablement of the invention.

Lack of best mode

A lack of best mode rejection is a type of rejection issued by a patent office when an inventor fails to disclose the best mode, or the preferred method, for carrying out an invention in the patent application. The best mode requirement is included in U.S. patent law and is intended to ensure that inventors fully and honestly disclose the best way of performing the invention, so that others can understand and replicate it. If a patent office determines that an application does not disclose the best mode, the patent application may be rejected. To overcome this type of rejection, the inventor may need to amend the application to include the best mode of the invention or prove that it was not known to them at the time of filing the application.

Best ways to handle rejections

pre-filing (preparing patent applications)

There are several steps an inventor or patent attorney can take to anticipate and avoid rejections from the USPTO when drafting a patent application. These include:

  1. Conducting a thorough prior art search: Before drafting the application, it is important to research existing patents and publications to ensure that the invention is novel and non-obvious.
  2. Reviewing the patent laws and guidelines: Familiarizing yourself with the patent laws and guidelines set out by the USPTO can help you anticipate and avoid common reasons for rejection, such as lack of enablement, lack of best mode, or improper formatting.
  3. Working with a patent attorney: A patent attorney can help you anticipate and avoid rejections by reviewing the application for compliance with the laws and guidelines, and for any potential issues that may arise during the examination process.
  4. Being complete and accurate in the application: Being complete and accurate in describing the invention, and providing enough detail and examples in the application can help to avoid rejections based on lack of enablement and lack of best mode.
  5. Filing a provisional patent application: A provisional patent application can establish an early effective filing date and can also serve as a placeholder to further develop the invention and gather additional information.

By following these steps and working closely with a patent attorney, inventors can anticipate and avoid many common reasons for rejection from the USPTO.

Post-filing (prosecution)

When an inventor receives a rejection from the USPTO, there are several steps they can take to respond:

  1. Review the rejection: Carefully review the rejection and understand the specific reasons for the rejection.
  2. Consult with a patent attorney: A patent attorney can help you understand the rejection and advise you on the best course of action.
  3. Prepare and file an amendment or response: Depending on the reasons for rejection, you may be able to amend the application to address the issues raised by the USPTO. Alternatively, you can file a response to the rejection, addressing the issues and explaining why the rejection should be withdrawn.
  4. Consider filing a request for continued examination (RCE): If you are unable to address the rejection through amendment or response, you can file a request for continued examination to continue prosecution of the application.
  5. Appeal the decision: If the application is still rejected after an amendment, response or RCE, you can appeal the decision to the Patent Trial and Appeal Board.
  6. File a continuation application: If the rejection cannot be overcome, the inventor can file a continuation application to claim the same invention, with claims that address the issues identified in the rejection.

It is important to work closely with a patent attorney throughout the process to ensure that the response is effective and addresses all of the issues raised by the USPTO.