Patent office action: What is it and how do I respond?

It’s not uncommon to get an Office action when you apply for a patent. What is an Office action? How should you respond? Find out more about what these are, and how to handle them.

by Joe Runge, Esq.
updated May 11, 2023 ·  5min read

Your invention is finished. Your patent is on file. Everything is going perfect and then you get it: your first office action. You finish the last page and want to crawl back into bed. No matter how bad it looks do not panic. The United States Patent and Trademark Office (USPTO) is not just going to give you that patent. You have to work to get past that office action patent rejection by making your case to the patent examiner. The work to make a good office action response starts before you even file the patent application.

What is an office action?

An office action is a formal response to your patent application from the patent office. An office can require different kinds of responses from the inventor. For example, an office action can object to the way a drawing is submitted or the way that format of your patent application. An office action can also reject your patent on the grounds of novelty.  

U.S. patents require absolute novelty: no one can ever have invented, published, or presented your invention before you. Knowing how to make sure you’ve got absolute novelty starts before you even file a provisional patent application: with a good patent search. You have to know what other inventors, engineers and companies have said in the field of your invention. A good patent search produces a few results that help you explain what is novel about your invention by showing what others have done. 

For example, you are changing your millionth diaper and regretting your decision to use cloth diapers. The covers that you put over the cloth diapers always leak around your son’s legs. All the plastic pants you snap over the cloth diapers aren’t flexible around his legs. Inspired, you sketch a design that will extend further down the babies’ legs and cover the thick cloth diaper—it can’t fail. You search online and find that no cloth diaper covers use such a design.

When you file your patent, include references to all of the plastic diaper covers that you found. They tell the story of your invention: no one thought to extend the diaper cover-to-cover leaks. It will help the examiner understand what makes your invention novel. The examiner will then conduct his or her own search. If you have already shown the examiner results that you think are relevant, it will help them avoid a search that comes up with irrelevant results.

But imagine that two years after you file your patent, you get the first office action. The examiner rejected all your claims because they found a catalog that showed a disposable diaper with extended legs. The office action will explain the basis in law for the patent rejection, it will cite the patent or publication that proves your invention is not novel and make the argument why it is too similar to your invention.

Office action response

Do not take it personally. The examiner is not rejecting your invention—just the way you claim it. At the end of every patent is a numbered list of sentences that describe what part of the invention you claim is yours. A claim is the most valuable part of the patent. It is the part of the patent that infringers infringe. It is exactly what the inventor owns.

The patent process is a negotiation. Most lawyers file a first set of claims that is broader than the inventor needs. The examiner will almost always reject the first set of claims and then work with the inventor to find a middle ground. Just like you do not pay sticker price for a car, you should never file a patent with the final set of claims. You have to negotiate and your office action response is the continuation of a strategy you started when you filed your patent.

In the case of your diaper invention, you read through your original claims and realize that you did not specify that the invention was for cloth diaper covers. Your claim is for a diaper with extended wings covering the legs. The examiner makes a point that disposable diapers had already made a similar invention. Maybe you can get around the office action if you limit your claims to cloth diapers. There is a really good way to find out.

Examiners leave their contact information in the office action. Email the examiner and ask to schedule an interview. Interviews allow inventors, or their attorney, to ask the examiner questions. The patent office is very, very busy so plan on scheduling the interview a few weeks in the future. At the interview ask the examiner questions. Avoid the urge to lecture or to complain. You want to find out what the examiner is thinking and the rationale for the office action. Maybe she has made a genuine mistake or you failed to convey some critical point of your invention. 

Interviews are also great opportunities to test and see if the examiner is willing to compromise. You ask the examiner if you can get around the diaper rejection if you limit your claims to cloth diapers. The examiner may agree if you limit the claims to cloth diaper covers made from water-resistant materials. You can get to work drafting your office action response and a revised set of claims.

It is the duty of the United States Patent Office to ensure that every design patent, utility patent, and any other intellectual property given in the name of your government is worthy of an issued patent. Every inventor has to work to get those rights, so start early: know what makes your patent novel, file the patent with the references you find, and work with the examiner to get the claims you need that the patent office can accept.

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Joe Runge, Esq.

About the Author

Joe Runge, Esq.

Joe Runge graduated from the University of Iowa with a Juris doctorate and a master of science in molecular evolution. H… Read more

This portion of the site is for informational purposes only. The content is not legal advice. The statements and opinions are the expression of the author, not LegalZoom, and have not been evaluated by LegalZoom for accuracy, completeness, or changes in the law.