How to Amend a Patent Application After Rejection? A Guide to OA Responses and Divisional Application Strategies

Receiving a rejection from an examiner is a common part of the patent application process, not the end of the road. In fact, the vast majority of patent applications go through at least one Office Action (OA) before being finally granted. How an applicant effectively responds to a rejection, and how they overcome examination obstacles through clever amendments and strong arguments, becomes a key factor in determining the fate of the patent.

A patent application rejection does not mean that the technical solution has no value. More often, it is a temporary obstacle caused by factors such as the way the application documents are drafted, the scope of protection of the claims, or the choice of cited documents. By scientifically analyzing the reasons for rejection and making targeted amendments to the application documents, most patent applications can eventually be granted.

This article will delve into the amendment strategies after a patent application is rejected, including the basic principles of OA responses, techniques for amending claims, and the use of divisional applications, to help applicants make wise decisions at key stages of patent examination.

Understanding the Types and Nature of Rejection Opinions

Rejection opinions during the patent examination process can be broadly divided into two categories: substantive rejections and formal rejections. Understanding the nature of the rejection opinion is a prerequisite for formulating an effective response strategy.

Substantive rejections mainly involve the three substantive conditions for a patent: novelty, inventiveness, and practical applicability. Among them, the issue of inventiveness is the most common reason for rejection. The examiner usually points out that the technical solution of the application lacks prominent substantive features and significant progress compared to the prior art. This type of rejection requires starting from the technology itself, mining the innovative points of the invention, and responding by amending the claims and supplementing the technical description.

A novelty rejection means that the examiner believes that the technical solution of the application has been fully disclosed by the prior art. In this case, it is necessary to carefully analyze the cited documents, find out the technical differences from the present application, or avoid the prior art by limiting the scope of the claims.

Formal rejections include issues such as unclear claims, insufficient disclosure in the description, and lack of support for the claims in the description. This type of rejection is relatively easy to resolve, mainly by adjusting the wording, supplementing technical details, or amending the expression of the claims.

After receiving a rejection opinion, the first thing to do is to calmly analyze the nature of the reasons for rejection, distinguish between core issues and secondary issues, and clarify the logical relationship between the rejection opinions. Only by accurately understanding the substance of the rejection opinion can amendments and responses be made in a targeted manner.

Basic Principles and Strategies for OA Responses

An OA response is a written opinion and amended document submitted by a patent applicant in response to an Office Action. An effective OA response not only needs to solve the problems raised by the examiner, but also should strive for the maximum scope of protection.

First, the OA response should fully respond to every issue raised in the Office Action, without omitting any reason for rejection. Even if some issues seem minor, they cannot be ignored, because any unresolved issue may lead to the application being rejected again.

Second, the response should be targeted, adopting different response strategies for different types of rejection reasons. For novelty and inventiveness issues, it is necessary to analyze the differences between the present application and the cited documents from a technical perspective; for formal issues such as unclear claims, it is necessary to improve the language expression and logical structure.

During the response process, it is important to pay attention to effective communication with the examiner. The response should be clear, concise, and logical, avoiding lengthy technical descriptions and irrelevant arguments. At the same time, it is necessary to respect the examiner's professional judgment. Even if you disagree with their views, you should base your arguments on facts and law, rather than emotional rebuttals.

For complex cases, an interview is an effective way to communicate. By communicating directly with the examiner, you can more clearly understand the examiner's concerns and explain the innovative points of the technical solution, thereby improving the pertinence and effectiveness of the response.

In an OA response, amending the application documents is the main means of solving problems. However, amendments must follow certain rules, cannot go beyond the scope of the original description and claims, cannot introduce new technical content, and cannot substantively change the subject matter of the invention.

Techniques and Methods for Amending Claims

Claims are the core of a patent application and the focus of amendments. Effective claim amendments can both solve the problems raised by the examiner and maintain a reasonable scope of protection.

The limitation method is the most commonly used amendment method. It narrows the scope of protection by adding technical features to the independent claims, thereby avoiding the prior art. The added technical features usually come from the description or dependent claims, and those features that can reflect the innovative points of the invention without unduly limiting the scope of protection should be selected.

When choosing the direction of limitation, it is necessary to comprehensively consider the technical value and the possibility of grant. Generally speaking, priority should be given to protecting those technical solutions with high market value and that are difficult for competitors to circumvent, even if this may mean more rounds of amendments and responses.

In addition to the limitation method, you can also consider changing the type of claims, such as changing a method claim to a product claim, or adding a new type of claim. This amendment method can protect the invention from different angles without changing the essence of the technical solution.

When amending claims, it is important to maintain the dependency relationship and logical consistency between the claims. The amendment of an independent claim may require corresponding adjustments to the dependent claims to ensure the integrity and coordination of the entire claim system.

For those problems that are difficult to solve through amendment, sometimes you can consider deleting some claims. For example, if an independent claim faces a strong prior art challenge, while other independent claims are relatively easy to be granted, you can consider deleting the problematic claim and giving priority to promoting the grant of other claims.

Precautions for Amending the Description

Compared to claims, the amendment of the description is subject to stricter restrictions. According to the patent law, the amendment of the description shall not go beyond the scope of the original description and claims. This principle is known as "no new matter" or "no amendment beyond the scope."

In practice, amendments to the description are mainly used to solve problems such as insufficient disclosure and unclear technical solutions. When amending, you can adjust the wording, supplement technical details, and improve the description of the embodiments, but you cannot introduce technical content that is not directly or implicitly disclosed in the original application documents.

For the defects in the description pointed out by the examiner, it is necessary to carefully analyze the nature of the problem and distinguish whether it is a real technical defect or a problem of unclear expression. If it is unclear expression, it can be solved by adjusting the wording and adding explanations; if it is a technical defect, it is necessary to evaluate whether it can be amended without adding new content, or consider other response strategies.

In some cases, in order to support the amendment of the claims, it may be necessary to correspondingly adjust the relevant content in the description to maintain the consistency between the description and the claims. This adjustment should be limited to changes in wording and not involve substantive changes in technical content.

Amendments to the description also need to be coordinated with amendments to the claims. If new technical features are added to the claims, it is necessary to check whether there is sufficient support in the description; if some claims are deleted, it may be necessary to adjust the relevant descriptions in the description to maintain overall coordination.

Strategy and Operation of Divisional Applications

A divisional application is an important tool in patent application strategy. Especially when facing a rejection, the reasonable use of a divisional application can improve the overall success rate of grant.

A divisional application refers to separating one or more new applications from the parent application. Each divisional application is an independent patent application, but they share the same filing date and priority date. The technical solution of a divisional application must be disclosed in the description and claims of the parent application and cannot go beyond the scope of the parent application.

When facing a rejection, a divisional application can be used as an alternative. If some technical solutions of the parent application are difficult to be granted but have important market value, you can consider submitting this part of the content separately through a divisional application to seek protection in a different examination environment.

A divisional application can also be used to expand the scope of protection. During the examination of the parent application, it may be necessary to significantly limit the scope of the claims in response to a rejection. At this time, you can use a divisional application to retain those deleted or amended technical solutions and strive for broader protection.

In terms of operation, a divisional application needs to be filed before the examination decision of the parent application is made. The documents of a divisional application should include a request, a description, claims, an abstract, and necessary drawings. The claims are the core of the divisional application and should be carefully designed according to the purpose and strategy of the division.

The claims of a divisional application can be the same as those of the parent application, or they can be technical solutions that were not claimed in the parent application, or they can be different combinations or expressions of the claims of the parent application. No matter which method is adopted, it should be ensured that the claims of the divisional application are different from those of the parent application to avoid double patenting.

Submission and Preparation of a Request for Reexamination

If the patent application is still rejected after amendment and response, the applicant can file a request for reexamination with the Patent Reexamination Board to seek to overturn the rejection decision. Reexamination is an important remedy for patent applicants, but it requires full preparation to improve the success rate.

A request for reexamination should be filed within three months from the date of receipt of the rejection decision, and should include a request for reexamination, reasons for reexamination, and necessary evidence. The reasons for reexamination are the core of the request for reexamination and should be analyzed and refuted in detail for each reason in the rejection decision.

When preparing the reasons for reexamination, it is necessary to comprehensively review the entire examination process and find out the errors in fact-finding, errors in the application of law, or procedural violations in the rejection decision. At the same time, new evidence or arguments can be provided to prove the inventiveness and technical value of the invention.

The application documents can also be amended during the reexamination stage, but the scope of amendment is stricter than that in the examination stage, and is generally limited to deleting claims, narrowing the scope of protection of claims, and correcting clerical errors. Therefore, the application documents should be perfected as much as possible during the examination stage to avoid leaving important amendments to the reexamination stage.

In the reexamination process, an oral hearing is an important link. The applicant can communicate directly with the members of the collegiate panel through oral presentation and defense, explain the innovative points and market value of the technical solution, and thus improve the success rate of reexamination.

Case Study Analysis

To more intuitively understand the amendment strategies after a patent application is rejected, let's analyze a practical case.

A company filed an invention patent application for a smart home control system. The core innovation was to optimize energy efficiency through artificial intelligence algorithms. In the first Office Action, the examiner rejected the application on the grounds of lack of inventiveness, believing that the system was just a simple combination of existing technologies.

After analyzing the rejection opinion and the cited documents, the applicant found that the examiner mainly focused on the hardware structure of the system and ignored the innovation at the algorithm level. Therefore, the applicant adopted the following strategies in the OA response:

First, the independent claims were amended to add the specific implementation steps and technical effects of the algorithm, highlighting the differences from the cited documents.

Second, in the response, the differences between the present application and the cited documents in terms of technical problems, solutions, and technical effects were analyzed in detail to argue for the inventiveness of the present application.

At the same time, the applicant also filed a divisional application to retain some of the minor technical solutions in the parent application in case the main application could not be granted.

After this round of amendment and response, the main application was successfully granted. Although the scope of protection was somewhat narrowed, the core technology was effectively protected. The divisional application obtained a broader scope of protection in subsequent examination, forming a complementary patent portfolio.

This case shows that when facing a rejection, the key is to identify the essence of the problem and make targeted amendments and responses. At the same time, the reasonable use of strategic tools such as divisional applications can maximize the protection of innovative achievements.

Summary and Suggestions

A patent application rejection is a common part of the application process, not the end. By scientifically analyzing the reasons for rejection and reasonably amending the application documents, most patent applications can eventually be granted.

When responding to a rejection, the following principles should be followed: first, fully understand the nature of the rejection opinion; second, make targeted amendments to the claims and description; third, maintain effective communication with the examiner; and finally, flexibly use strategic tools such as divisional applications.

For important patent applications, it is recommended to plan the response strategy in advance, including preparing multiple sets of claim solutions, predicting possible reasons for rejection, and even considering the timing and content of divisional applications. This forward-looking planning can greatly improve the success rate of patent applications.

Throughout the process, the role of a professional agent cannot be ignored. An experienced patent agent can not only provide professional advice at the technical and legal levels, but also formulate the most suitable response strategy for a specific case based on rich practical experience.

Finally, it needs to be emphasized that patent application is a systematic project. From the initial conception to the final grant, every link requires careful planning and professional operation. Only in this way can innovative achievements be protected to the greatest extent and the commercial value of patents be realized.