Legal Definitions - Rule 109 statement

A Rule 109 statement is an official document created by a patent examiner during the process of reviewing a patent application. Its primary purpose is to clearly explain why a specific patent claim has been approved, especially when the existing application record might not fully detail the reasons for this decision. Essentially, it ensures transparency and provides a clear, concise justification for the allowance of a patent.

When an examiner issues a Rule 109 statement, they are clarifying for the official record:

• How the approved patent claim is genuinely different from existing "prior art" (which refers to all publicly available knowledge, inventions, and publications that existed before the patent application was filed).
• Why these differences are "nonobvious," meaning they wouldn't be readily apparent or easily conceived by someone with ordinary skill in the relevant technical field.

This statement can be filed at any point if the examiner believes the official file doesn't adequately reflect the reasons for granting the patent.

Examples of a Rule 109 Statement in Practice:

• Clarifying a Complex Technical Distinction:

  Imagine a patent application for a new type of medical imaging device. The application process involved extensive discussions and several amendments to the claims, as the technology is highly specialized and the differences from existing devices are subtle. While the examiner ultimately decided to allow the claims, the detailed reasoning for distinguishing this invention from several similar prior art devices is scattered across many documents in the file history. To provide a consolidated and unambiguous explanation, the examiner issues a Rule 109 statement. This statement precisely outlines the unique combination of features in the allowed claims, explains how they overcome the limitations of the closest prior art, and articulates why these specific advancements are considered nonobvious, ensuring anyone reviewing the patent later can easily understand its scope and validity.

• Documenting a Change in Examiner's Perspective:

  Consider an invention for a novel material used in solar panels. Initially, the patent examiner rejected the claims multiple times, citing various existing materials and manufacturing processes as prior art. However, after a detailed interview with the applicant and reviewing new experimental data demonstrating unexpected performance benefits, the examiner re-evaluates and determines that the specific combination of elements in the applicant's material, while individually known, produces a synergistic and nonobvious improvement. To clearly document this shift in understanding and the specific reasons for allowance, the examiner files a Rule 109 statement. This statement explicitly addresses the previously cited prior art, explains why the new evidence and arguments overcome those rejections, and highlights the specific nonobvious advantages that led to the patent's approval.

• Streamlining a Lengthy Application History:

  A patent application for a new software algorithm has been under review for several years, accumulating a very long and complex file history with numerous rejections, amendments, and appeals. Eventually, the applicant and examiner agree on a final set of claims that are deemed allowable. To provide a clear and concise summary of the ultimate reasons for allowance, rather than requiring future reviewers to sift through years of detailed correspondence, the examiner issues a Rule 109 statement. This statement acts as a definitive summary, clearly articulating how the allowed claims distinguish themselves from the most relevant prior art and why they meet the non-obviousness requirement, making it easier for the public and future legal professionals to understand the basis of the granted patent.