Responding to a Patent Office Action

Responding to a Patent Office Action

by Jane Haskins, Esq., January 2015

Once you have filed an application for a patent with the U.S. Patent and Trademark Office (USPTO), your application will be assigned to a patent examiner for review. When a patent examiner or other official at the patent office communicates with a patent applicant, the communication is called an “Office action.”

A patent Office action should not be confused with a trademark Office action. Although both come from the USPTO, a trademark Office action signifies an issue with a trademark application and has nothing to do with patents.

Most patent Office actions provide a patent examiner’s opinion as to whether the claims in the patent application are patentable. Patent Office actions are very common, and receiving one does not mean that your patent will ultimately be denied.

Reasons for Office Actions

Some of the most common reasons for patent Office actions are:

  • Restriction requirements: If the examiner thinks that you have submitted multiple distinct inventions on a single application, you may be asked to restrict your application to a single invention or embodiment. You can respond to this type of Office action by electing to proceed with only those claims relating to one invention or embodiment and canceling the remaining claims. Or you can respond by explaining why the inventions or embodiments are not independent or distinct.
  • Your application contains non-patentable subject matter, as defined by the USPTO.
  • There is an existing patent for the item or idea that you’ve submitted.
  • Obviousness: The examiner believes your invention should have been obvious given the references you cited showing parts of your invention.
  • Technical problems such as grammatical errors in your description.

Types of Office Actions

Non-final Office actions: If the examiner believes there is a problem with your application, either because you have not complied with all USPTO requirements, or you have not submitted a patentable invention, you may receive a non-final Office action. You can respond to a non-final Office action by explaining in writing why the examiner’s position is incorrect, or by amending your application to resolve the problems identified in the Office action. As mentioned above, Office actions are extremely common and do not necessarily indicate that your application will be denied.

Final Office actions: If your response to the non-final Office action does not resolve the issues with your application, you may receive a final Office action. Your options for responding to a final Office action are more limited. You are only allowed to make amendments that the examiner has indicated will make the application allowable. You may also file an appeal with the Board of Patent Appeals and Interferences or a Request for Continued Examination (RCE), which opens the application up for further examination.

Advisory actions: If you amend your application in response to a final Office action and the examiner is still not satisfied, you may receive an advisory action, which is essentially an Office action that explains exactly what amendment will be allowed. You can either amend your claims to conform to the requirements of the advisory action, file an appeal, or file a Request for Continued Examination (RCE).

Time for Responding to an Office Action

You usually have two or three months to respond to an Office action, depending on the type of Office action. However, you may have only one month to respond to a restriction requirement. And in certain circumstances, an Office action will specify a different response period.

When to Seek Help

If you are not used to dealing with Office actions, you may be confused about what you need to do to resolve the issues with your application, or you may feel uncomfortable making an argument or negotiating with the patent examiner yourself.

For these reasons, you may want to consult with a patent lawyer before responding to an Office action.

If you need to speak to a patent attorney about a patent Office action, you can ask questions and get advice from an attorney through the LegalZoom business legal plan for a low flat fee.