Generation and processing of patent rejection data

Intellectual Property Office examiners examine whether an applied patent (specifically, the claims that claim rights) meets the requirements for granting a patent set forth in the Patent Act (novelty, non-obviousness, etc.). The examiner will send a non-final rejection opinion to the patent applicant stating that the patent cannot be granted because the applied-for patent is not novel over the prior art (preceding patents or prior non-patent literature) (lack of novelty) or is obvious (obviousness). If the applicant's comments or amendments (corrections) do not resolve the lack of novelty and obviousness of the applied patent, the examiner will notify the applicant of a final rejection.

Patent rejection data is data that arises during the examination of an applied patent. Patent rejection data essentially includes i) the patent application being examined, ii) the preceding patents/non-patent literature, iii) the reason for the rejection (lack of novelty, obviousness), iv) the date of the rejection opinion, etc.

Examples of patent rejections

Example of patent rejection during examination at the United States of America's Intellectual Property Office

The example below is a notice (office action, OA) issued by an examiner of the United States of America Intellectual Property Office upon examination of Apple's 16/258,431 patent, stating that claims 1 (independent claims), 8, 12, 14, 17, and 20 of the patent are unpatentable under Section 102 of the U.S. Patent Act (lack of novelty) because of the preceding patent, Seoul Viosys' 2015/0125355 patent, and are therefore ineligible for patent issuance.

Examples of patent rejections during examination at the Korean Intellectual Property Office

In the example below, an examiner of the Korean Intellectual Property Office (KIPO), upon examination of Apple's patent 10-2018-7034636, notified (office action, OA) that the patent is unpatentable due to the preceding patent, Harex Infotech's patent 10-2001-0090485, and cannot be issued for patent issuance under Article 29-2 (non-obviousness) of the Korean Patent Act.

Occurrence of rejection data

Original cause of rejection (office action by an examiner in the Intellectual Property Office)

An examiner sends a first non-final rejection opinion to a patent applicant stating that a patent cannot be granted because the applied-for patent is not novel over the prior art (preceding patents or prior non-patent literature) (lack of novelty) or is obvious (obviousness). If, in response to the examiner's notice of reasons for rejection, the applicant's comments or amendments (corrections) do not cure the lack of novelty and obviousness of the applied patent, the examiner will notify the applicant of a final rejection.

Kinds of rejection : Lack of novelty vs. Non-obviousness

Reasons for patent rejection include i) violations of substantive requirements, which are related to the content of the patented technology, and ii) violations of formal/procedural requirements, which are not related to the content of the patented technology. Violations of substantive requirements most often include i) lack of novelty, and ii) lack of non-obviousness. (Note that violations of formal/procedural requirements are not related to the content of the patent's technology, so they are easier to overcome).

If the technical content of a particular claim of the patent being examined is substantially the same as the technical content appearing in the prior (patent) literature, the Intellectual Property Office examiner will issue a rejection due to lack of novelty.

On the other hand, if the technical content of a particular claim of the patent being examined is such that it can be easily combined by those skilled in the technical field with the technical content appearing in the prior (patented) literature, the examiner of the Intellectual Property Office will give a reason for rejection for non-obviousness.

Article 102 of the United States of America Patent Act and Article 29(1) of the Korean Patent Act stipulate novelty as a patent requirement. On the other hand, Article 103 of the United States of America Patent Act and Article 29(2) of the Korean Patent Act stipulate non-obviousness as a patent requirement.

Coverage of rejection data: time vs. space

Nation coverage of rejection data

Patent rejection data is only available from the United States of America and Korean Intellectual Property Office. The nation coverage of rejection data will be expanded in the future.

Time coverage of rejection data

United States of America patent rejection data is available from 2008 onwards based on the time of rejection from the United States Intellectual Property Office. In particular, rejection data from 2012 onwards is highly fidelity.

Korean patent rejection data is available from 2013 onwards, based on the time of rejection from the Korean Intellectual Property Office.

Detailed knowledge related to rejection data

Kinds of claims that are rejected

The content of a patent's technology that is examined by examiners at the Korean Intellectual Property Office is described in the patent's claims, which are composed of the most important i) independent claims and ii) dependent claims that cite the independent claims.

The right holder relationship between the rejected patent and the preceding patents used in the rejection of that patent

The right holders of the rejected patent and the preceding patents used in the rejection of that patent are i) different and ii) the same. The different case is common. On the other hand, the same case can be referred to as self rejection. Among the patents in possession of a right holder, a patent that rejects many of its own subsequent patents is very likely to be a core patent of that right holder.

A patent set with a self-rejection relationship has a high R&D continuity, and a patent set with a high R&D continuity is non-exclusively reflected in a company's products. Among patents, patents that are strongly reflected in products can be considered as important patents. Patents with a strong self-rejection relationship, along with patents with a high No. of domestic and international patent families, can be used to estimate the patents reflected in the company's product strategy.

Special patents related to rejection

If a held/invented patent rejects many special subsequent patents, the held/invented patent is likely to be utilized in a variety of patent businesses. Conversely, if a held/invented patent is rejected because of special preceding patents, the technology or functionality related to the held patent or the products/services in which the technology/function is incorporated will have a higher patent risk.

Special patents include i) patents that have been purchased (transacted) or transferred through M&A, ii) patents that have been used in disputes such as lawsuits or judgments, iii) patents with many domestic and foreign patent families (high-cost investment patents), iv) patents with high R&D continuity due to self-forward citations or self-rejections (core patents within the organization that owns them), v) standards patents or patents used for FDA approvals, etc.

Patent rejections data sources

US Patent rejections data sources

The US rejection data included in the data sheet is based on data available from the USPTO. For more information, please refer to the link below.

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US Patent Rejection Days contains data on when the patent under examination (Pi) was rejected (rejection date), by which preceding patents (Pj, patented/non-patented literature), which claims of Pi were rejected, at what stage of rejection (non-final, final), and for what reason (lack of novelty § 102, non-obviousness § 103, etc.). Additionally, there is also organizational information (tech center, etc.) from the USPTO where the Pi is being examined.

Patent rejection data processing

Processing of patent rejection data sources

Processing of US patent rejection data sources

Based on our confidence in the rejection data officially provided by the USPTO, we perform the following processing.

First, we exclude non-patent literature, such as articles, from the literature recognized by the USPTO as prior art (although it is available for future searches, it is rarely available for quantitative analysis and is less useful for non-patent literature).

Second, we exclude publications from foreign intellectual property offices (10% or less) of the preceding literature. However, the roadmap for the rejection data is to include them in the analysis.

Third, we also exclude (as a matter of policy) literature with reversed application dates/priority dates. Typically, when a particular patent (Pi) is examined, the preceding patents (Pj) that examiners use to reject it have an earlier application date/priority date than Pi (99.9% or more of the time). However, the actual USPTO's OA filings contain a very small number of cases in which the date-reversed (later application date and priority date of Pj) literature is used as a reference for the patent under examination (Pi), either by mistake by the examiner, presumption, or otherwise. As a matter of policy, these references are excluded because they are few and far between, and their exclusion does not cause any major problems or unnecessary misunderstandings.

Methods of processing rejection patent data

Principles of processing rejection patent data

Patent rejection data is generated during the examination process of an applied patent. The patents under examination and the preceding literature used for rejections in the examination are also patents. Therefore, the data is processed according to PatentPia's processing scheme for patent data.

Basic Patent Data Processing

Base data	Processing issue	More links
Right holder	Patent right holders can be changed by assignment. As a result, for all US patents, segmenting the right holders into original assignee, previous assignee, and current assignee.	[link]
Patent classification	Based on the patent publication, changes may occur in the patent classification assigned to each patent. At this time, it updates the patent classification for each patent to reflect the current patent classification as published by each nation's intellectual property office. Based on the main patent classification, it contains the patent classification code for your upper (MAX 9 DEPTH) patent classification.	[link]
Date	Add the year of first publication, when the patent was first published in the official publication. The year of first publication is based on the open date for open patents or the issuance date for patents issued without publication.	[link]
Link data	Link data includes links to bibliographic, full text, and other information about individual patents links to various analysis data about individual right holders links to patent classifications.	[link]

Advanced patent data processing

Base data	Processing issue	More link
Patent attributes	Weights that can be weighed per patent includes No. used in litigation/trials, No. that changed ownership(transacted)/recoveries transferred through M&A, No. of domestic/international patent families, Standard/FDA/Whether or not pantents have national R&D achievements, No. of forward citations, No. of patents rejected, etc.	[link]
Right holder attributes	Right holder attribute includes Right holder nationality Type of organization(company, universities/research institutes, individual, etc.), (as a proxy for right holder size)No. of patents in possession or category of patents, Whether or not the right holder is an NPE, etc.	[link]
Inventor attributes	Inventor attribute includes (presumed)Ethnicity of the inventor, Nationality of the inventor's address No. of patents invented by the inventor, etc.	[link]
OA data	OA data includes Total number of claims rejected in OA, Total No. of patents used in OA, No. of patents used for lack of novelty in OA, No. of patents used for non-obviousness violations in OA.	[link]
Relationship data	Relationship data includes Whether(1) or not(0) the right holder matches between the input patent and the rejected patent, Whether(1) or not(0) the right holder company group matches between the input patent and the rejected patent, Whether(1) or not(0) the right holder matches between the input patent and the rejected patent, Used for rejections for lack of novelty(X) or non-obviousness(Y), The number of claims that the input patent rejected, The number of claims that the input patent is rejecting due to lack of novelty, The number of claims that the input patent rejected for non-obviousness, Whether(1) or not(0) independent claim 1 rejection was used, Whether(1) or not(0) the input patent rejecting independent claim 1 due to lack of novelty, Whether(1) or not(0) the input patent rejecting independent claim 1 due to non-obviousness, Whether(1) or not(0) the input patent was included in the IDS(Form1449) , Whether(1) or not(0) the input patent examiner citation(Form892) was included, Time interval (month)_By application date_Between input patent and rejection patent, Time interval (month)_By priority date_Between input patents and rejections, etc	[link]

Processing extended data

Extented data	Processing issue	More link
Right holder attributes	If the right holder belongs to a specific company group, the right holder company group is included. If the right holder is a listed company, information such as the listed market nation, market, and sector is included. If the right holder is a company related to a specific theme, the theme information is included.	[link]
Patent classification	Includes the WIPO 35 Industry Classifications (WIPO's official system), which is WIPO's categorization of industries based on patent classification, and the WIPO 10 Industry Classification System, which is a simplified classification system.	[link]