The Dreaded Office Action
The Patent Office is an administrative court, and as such it adjudicates like one. Most United States’ courts operate under an adversarial system, where one side is argues against the other. The Patent Office has Examiners who represent the public and Applicants represent themselves or seek representation. When an Applicant applies for a patent, he/she is actually submitting for a claim of right to take from the public, so Examiners are there to challenge the patent applications. Applicants and Examiners are on opposite sides to determine what, if any, is the proper amount of legal protection warranted while the Patent Office adjudicates the proceeding. This is how the United States justice system ensures that all interested parties are adequately represented.
Applicants should conduct a patentability search before filing a patent application, but even if they do, because Examiners represent the public, it is their duty to conduct their own independent search. And search they will. They will search throughout history and throughout the world to determine if an Applicant’s invention has already been invented. There are hundreds of millions of inventions out there and million more every year. It would take a lifetime to search each and every one, but an Applicant’s diligent search before applying to the Patent Office for a patent is the best way to prevent wasting time and money.
Another aspect of our justice system is due process. Every party must be given notice and an opportunity to be heard. So, the Examiner must present their findings to the Applicant and provide the Applicant a reasonable opportunity to rebut the Examiner’s findings. This is the Office Action. Applicants are usually given two Office Actions as an opportunity to rebut. While the Office Action may be dreaded by an Applicant, this is just part of the normal back-and-forth that is part of patent application prosecution process.
