I've been at this patent for almost a year - I've submitted the initial patent filing and the first office action has come back from the USPTO. The scary thing is there were 18 claims and all 18 claims were rejected. Now the lawyer has to reply and I'm not sure if this is something to pursue any further. I had originally gotten the lawyer to do a patent search, which they didn't come back with anything of note. Now the USPTO had 3 patents referenced that looked fairly similar to mine.

Has anyone else gone through a similar situation and what did you do? What are your overall thoughts on pursuing or abandoning the idea?

Any help is appreciated! Thank you

Yes, have been through this. They will almost ALWAYS come back with a complete denial. That is totally standard.

Bottom line...every situation is different. You will have to review all the existing patents that they cited and determine if you have a convincing argument to counter their assertion. Then you get to pay your lawyer a bunch of fees to write that argument. Only you (and other people around you that know what you're doing) can make the determination of cost/time vs. the potential value of the patent (defensive & offensive) vs. likelihood you can actually get the patent.

Good luck. :P I'm not a fan of the patent system/office, particularly if you're a small fish.


PS: I'd definitely be concerned if your attorney couldn't find patents that are very similar. You would have to judge that as well...could you have found them yourself with normal keywords in your own filing?

jalex is basically right. It will depend on what you want out of the patent and the type of rejection. What do you intend to get out of your patent? Is it just for lulz? Or is there are particular product implementation you want to cover? Or are you just trying to sell the patent?

With that in mind, read through the cited art and figure out what are the differences between your invention and the cited art, and if those differences are worth pursuing in your patent claims. If the Examiner is combining three references together to teach your invention, most likely it is an obviousness type rejection, so he's basically saying that he can't find anything that is exactly what you are doing, but he believes that it would have been obvious for someone to come up with your same idea if he accessed those three references for some reason. That can sometimes be a lot easier to overcome than a novelty type rejection, since you can attack why the reasoning was wrong, or find something deficient in the references or in the combination.

Once you find your differences and you think the patent is worth pursuing, talk to your lawyer to initiate a telephonic Examiner Interview, so you can explain your invention to the Examiner over the phone with the help of your lawyer, explain the differences between your invention and the cited art, and propose amendments to your claims to emphasize the differences or at least ask for their advice on what would work. Examiners like to hear from small inventors, and over half the time patents are written so obtusely that the Examiner may actually have no idea what your invention is anyway from reading your patent application. If you explain it to him, then he might be more helpful in suggesting things that can help you obtain a patent.

I had a brief career as a patent examiner and I pretty much agree with all of the above. Getting everything ejected on the first go-round is entirely standard. Why the examiner found the prior art and your lawyer didn't depends on a lot of things like how long the two of them spent digging through the literature, what tools were used, skill, etc. Could also be the attorney found these references but didn't think them at all relevant. Without knowing more I'm reluctant to say the lawyer dropped the ball.

As it is, I would take a look at these three references and just give it a gut check. Do the references really look like they anticipate your invention? Is the examiner going out on a limb and combining references in ways that seem dubious? As mentioned, it matters quite a bit if it's an obviousness rejection where multiple inventions are combined vs. a single reference that teaches all of the elements in the claim.

Also agree that phone interviews can be productive. I had cases where I was able to propose a small modification to the claim which the attorney found totally satisfactory. You might be able to get a feel for how strong the examiner thinks his case is, whether it's a lost cause or whether you might be able to hammer out an acceptable amendment.

Basically, don't stress out, have a chat with your representative.

If your claims weren't rejected at the outset, then that likely would mean they were too broad. That being said, some rejections are of more possible concern than others. If it's just "prior art" rejections (102, 103) then usually you can fight to get those removed, but if it is 101 or 112 rejections then you be in hot water, although even there you can usually end up okay if the application was properly drafted.

And keep in mind that patents can look similar to yours but there still might exist room for you to claim a novel, non-obvious invention. Often inventors read the office action and get discouraged. But remember - it is the patent examiner's job to make it look like you shouldn't get a patent. Think of it as a tug of war - the examiner just pulled the rope toward him/herself, and now it's your turn to pull back, whether in the form of argument, claim amendments, or both.

Thank you everyone for your responses. This has been extremely helpful. I'm still deciding if I shouldn't put more money into product development and getting enough sales to pay for the patent down the road. I know the patent would then be abandoned, but maybe it wouldn't be the worst idea to keep reiterating.

Also, I didn't even know we had the option to talk to the patent examiner, I wonder if I've picked the wrong lawyer on top of it. This process has been a learning experience. The patent references are pretty similar, perhaps some slight differences... I'm sure if we pay the lawyer enough and gave his firm enough time he could get it passed through, but at what cost? I believe I'm leaning more towards prolonging the patent and putting more money and effort into the product.

If its for your product, then the problem is that if you don't have a patent then you can't stop people from copying your product and selling it in the market. If you have investors or potential investors, then they are going to want to see the patent protecting your product.

Each response to the office action will run you maybe a few thousand dollars in attorneys fees at most for most situations. The first response also has no patent office fees unless you take too long in responding to the Office Action, so this is one of the cheaper times to try working something out with the Examiner.

If your attorney charges you more than a few thousand dollars for preparing and filing a response, then you should ask the attorney to justify why the fees were so high, particularly if you and your lawyer are going to talk with the Examiner over the phone to work things out. Personally, I would say even $3000 is already pushing the limits without some justification.

One REALLY important point to make is even if you ultimately get a patent it doesn't mean you necessarily have a right to productize what you've patented. Some of the very same references cited against you - plus even others - could be infringed by your product. A patent gives you the right to stop others from using your patented technology, not necessarily any affirmative right to do anything with your invention itself.

To find out if you can safely use go to market with your product, now you're talking about a clearance search which can often cost a lot more than a patent.