What is an "Other" Rejection?
As it turns out, one of the most common types of rejections at USPTO is not what you think it is
Why do patents get rejected?
This isn’t a philosophical question like “why do bad things happen to good people?” In this case, we do know the answer. USPTO provides statistics on the causes of rejections, and they are illuminating.
As it turns out, a majority of rejections can be grouped into 101, 102, 103, or 112 rejections. In every art unit, 103 is the most common and 101 is the least common of these.
But there is another, large category called “other.” The amount of “other” rejections varies quite a lot by Tech Center. In TC 1600 (Biotechnology and Organic Chemistry), 43% of all patents have an “other” rejection. In TC 2800 (Semiconductors/Memory, Circuits/Measuring and Testing, Optics/Photocopying, Printing/Measuring and Testing), it is only 16%. Across the entire patent corps, 19% of all patents had an “other” rejection—as many as 101 rejections. This distribution has been relatively stable over time, but is trending slightly upwards. Below, for example, you can see the data for the past few months in TC 1600.
This week in Nonobvious, we are going to discuss what an “other” rejection is and some key ways to avoid them.
A Strange Brew
So, what is an “other” rejection?
As the name suggests, they are for things other than the typical reasons. Although there are obscure reasons for rejection, like inoperability, those are quite rare. In reality, most “other” rejections are for errors. Some common examples include forgetting to cite to a figure or having a label element that is unexplained, but I have seen odd examples in office actions, like an examiner who mentioned “informal paragraph numbers.” Typos that may result in changes to the meaning of the patent may also be a cause for a rejection.
So how do “other” rejections creep in?
Patents are very long documents. It is easy to miss a label number when drafting a specification; avoiding that can take hours, can can updating label numbers when a figure changes. Add in collaboration across a firm, technical complexity, the race to win a priority date, and recently budget pressures taking time away from proofreading, and it is easy to see how patent errors can creep up over time.
A Yale Journal of Law and Technology article found the allowance rates are going down over time and that small firms in particular are more impacted by this trend. The reason is likely that long patents are likely to introduce errors, which are less likely to be found if you do not have a team looking for those errors. This is a place where AI can be an equalizer. It already has been shown to boost the productivity of lawyers. When trained properly, it can also reduce errors because, unlike a human, it doesn’t get tired or bored. That said, to be clear, this issue is not unique to small law firms. Examples of errors from companies like Google, Apple, and Netflix abound in the caselaw.
Errors are not only important for office actions. The same types of issues that can lead to an “other” rejection, even if not caught in prosecution, can come up later in litigation or IPRs. The Federal Circuit has been quite clear in its cases that it will not save a patent holder, not even Google, over a typo. There are numerous cases about “a” vs “the,” issues with comma placement, and more. And given that patent law is form over substance it is critical to catch these mistakes early. Otherwise, you might get an “other” rejection.
Weekly Novelties
The US-China tech rivalry has a new domain: patents (SCMP)
An argument against the Biden Administration’s Bayh-Dole proposal (IPWatchdog)
The CEO of VLSI defends its lawsuit against Intel (WSJ)
As the FTC continues its rampage against the Orange Book, a new filing against Teva over inhaler patents (Fierce Bio)
Sony managed to dismiss a $500 million lawsuit over its Playstation platform (Law360)
An interesting argument from Randall Rader, former Chief Circuit Judge of the Federal Circuit, that the Supreme Court has ignored the Patent Act of 1950 (IPWatchdog)
USPTO’s Kathi Vidal vacated decisions regarding several car companies and Volkswagen, reviving their challenges (Bloomberg Law)
China’s IP tribunal upheld CRISPR/cas9 patents from Nobel Prize-winner Emmanuelle Charpentier (Life Sciences IP Review)
And lastly, in amusing news, a patent attorney was announced as Robert F. Kennedy, Jr.’s running mate for President (Courthouse News)