What is the Difference Between a Patent Rejection and a Patent Objection?

By Matthew Dickstein

Patent rejections and objections are two issues that an examiner can raise during the prosecution of a patent application. In both cases, the applicant can file amendments or responses to address the issues.

Patent Rejection

A patent rejection is the USPTO saying the merits of the claim are not patentable in view of laws passed by Congress. Rejections stem from 35 U.S.C. § 101, 102, 103, and 112 [1], which permit a rejection if the claims are patent ineligible, not novel, obvious, indefinite, or lack of written description. When a rejection is issued, the applicant must show that the claim is allowable despite the rejection [2] by presenting evidence of patentability and/or amendments to the claims [3].

A claim rejection can be appealed if there have been two or more rejections. This appeal should be filed with the Patent Trial and Appeals Board (PTAB) [4] and is taken if a solution to the rejection cannot be reached with the patent examiner.  

Patent Objection

An objection indicates procedural deficiency within the application. Objections refer to issues with the form of the application as opposed to the content. Objections stem from rules in 37 CFR [5].  Examples of reasons for objection could be formatting issues or illegible drawings. Fixing an objection is often relatively simple, by implementing the changes the examiner requires.

An objection is not appealable to PTAB. To appeal an objection, the applicant must file a petition with the Director of the USPTO [6].  

Overlap Between the Two

Rejections relate to the laws (35 USC), and objections relate to the rules (37 CFR), which have overlap between them. Due to this overlap it is possible to have a rejection and an objection for the same reason [7].  If there is overlap between the two of them then the PTAB may rule on an objection if the objection is “determinative of the rejection” [8].

References

[1] Understanding the patent examination process

[2] 706-Rejection of Claims

[3] Id.

[4] 1201-Introduction

[5] Understanding the patent examination process

[6] 1201-Introduction

[7] Understanding the Patent Process: Rejections vs. Objections - IPWatchdog.com | Patents & Intellectual Property Law

[8] 1201-Introduction