What are my options if my patent application was rejected by the US Patent and Trademark Office? 9 Answers as of April 13, 2015

Would it help to have an attorney review my patent? I think that I might stand to make a considerable amount of money.

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Webb IP Law Group
Webb IP Law Group | Jason P Webb
The US Patent Office rejects almost every application, so just expect it. It would help a lot for you to consult with a patent attorney. The rejections are written very persuasively and will often look like there is no hope, but they often have logical, legal and factual errors in them that you can use to get past them. However, if you wrote your own application, there are likely to be some very serious issues, some of which possibly can not be fixed.
Answer Applies to: Utah
Replied: 4/13/2015
Gerald R. Black, Esq.
Gerald R. Black, Esq. | Gerald R. Black
The sole purpose in filing a Patent Application is to obtain all of the patent protection that the inventor is entitled to. Merely obtaining a Patent is not enough. The inventor may soon discover that a competitor has taken the essence of the invention without infringing the issued Patent. Of course, generally, the likelihood of obtaining any Patent is enhanced with the effective assistance of Counsel. It is strongly recommended that you consult with Counsel about the Office Action before responding to the Office Action. Good luck with your program.
Answer Applies to: Michigan
Replied: 4/13/2015
Barton Barton & Plotkin
Barton Barton & Plotkin | Maurice Ross
You should not be handling this without an attorney. Get a good patent attorney ASAP.
Answer Applies to: New York
Replied: 4/13/2015
DANIEL NESBITT
DANIEL NESBITT | Hasse & Nesbitt
Certainly it will help, and you seem to think so too. It appears you filed your application on your own, or pro se. Keep in mind that the patent attorney can't change anything in your written description. You might consider in the future bringing in a patent attorney earlier in the process. Good luck.
Answer Applies to: Ohio
Replied: 4/13/2015
Banner & Witcoff, Ltd. | Ernie Linek
Rejections are a typical part of patent prosecution. You normally have three months to file a response to a rejection or two months for a restriction action. You need a patent attorney to review the case and give you guidance. Making money on an invention requires a granted patent and sale of your product. Best of luck !
Answer Applies to: Massachusetts
Replied: 4/13/2015
    Sebby Law Office
    Sebby Law Office | Jayne Sebby
    You don't provide enough details to answer this question. However, if you submitted the patent application yourself, without any help from a patent attorney or patent agent, my first two guesses would be that a) your idea is not patentable under current law or b) your application was not filled out properly. You can appeal the patent examiner's decision but there's no guarantee that the Board will reverse the examiner. Talk to a patent attorney about what to do next.
    Answer Applies to: Nebraska
    Replied: 4/13/2015
    Michael M. Ahmadshahi
    Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
    Your options are to either abandon the application or file a response to the Examiner's rejections. You further have the option to talk to the examiner and see if he can help you in preparing the response. However, patent laws are complex and you should let an attorney or, if budget is a concern, a patent agent prepare the response for you.
    Answer Applies to: California
    Replied: 4/13/2015
    Law Office of Kirk Buhler
    Law Office of Kirk Buhler | Kirk A Buhler
    Your options are to not reply and let the application go abandoned, or to reply to the patent office. You should talk to a patent agent or attorney who can review the rejection and advise you of the best option.
    Answer Applies to: California
    Replied: 4/10/2015
    Microtechnology Law & Analysis | Daniel Flamm
    It is common to have claims rejected. In response to a claim rejection, you may 1) argue reasons why the claim should not have been rejected, 2) amend the claim and/or argue based on the amended claim, and/or 3) draft (a) new claim(s). There are many other strategies as well, they are too numerous or complex to list here. It sounds as if you are not experienced in patent prosecution. If the prospective patent rights appear to be valuable and you can afford to hire an experienced patent attorney who has a background in your subject area, you should definitely do so. Having an attorney can easily make the difference between obtaining a patent or not, as well as having claims that will be valuable and enforceable. I strongly recommend selecting an attorney based on the attorney's understanding and proficiency in your subject matter and prosecution experience, rather than looking for the lowest rate. The attorney's skill and knowledge can have a huge impact on the end result.
    Answer Applies to: California
    Replied: 4/10/2015
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