What Is an Office Action and What Do We Do About It?

As you likely know, once a non-provisional patent has been filed with the USPTO it will be assigned to a Patent Examiner and begin the examination process.  While this process takes a long time, you should expect to receive a first Office Action within 12 to 24 months from the filing date of your patent.

An Office Action is sent out to indicate that the Examiner has reviewed your application and has made some sort of official determination.  The Examiner’s determination may take a number of forms.  On occasion, the Examiner’s first Office Action may state that he or she has reviewed your application, compared it to as many similar types of inventions (prior art) that are already patented (if any), looked at the general state-of-the art (what’s already out there) and determined that your invention is: novel (a new idea), non-obvious (in light of all the other ideas put together), has utility (a useful purpose), and that the drawings, specification, and claims all work together properly.  If that is the case, the first Office Action is a “Notice of Allowance” which means that your application has been approved for issue as a new patent.
However, in the vast majority of cases, the first Office Action is notice to the inventor that the Examiner believes that the application has some type of problem.  The Examiner may believe that: 1) your application conflicts in some way with other patents, 2) that the claims are not supported by the specification, 3) that there is a problem with a drawing, 4) that something is not explained adequately, 4) that your invention is not new, 5) that you invention could be “obviously” put together from a combination of other patents or ideas, or 6) any of a number of other rejections.

If you receive a first Office Action that is a rejection, don’t be discouraged.  It is the Examiner’s job to make sure the specification of your patent application sets forth what is claimed, that there is no prior art just like it, that the invention is useful and not obvious, and that all parts of the application work together. Some say that it is the Examiner’s job to always find something wrong, and while that is a bit of an exaggeration, you should be prepared in case your application gets a first Office Action rejection.
If you do get a first Office Action rejection, the good news is that this rejection is not fatal. In fact, you (or your patent agent/attorney) are invited to respond to the Examiner’s findings and offer a rebuttal.  Better still, the Examiner quite often offers his/her own remedy in how to adjust the claims or specification to satisfy the objection(s). Your response to the Office Action can be in the form of a legal counter-argument, an adjustment to the language of your application, a change to a drawing, typographic corrections, or a combination of changes and counter-argument, BUT you cannot add new information at this point.  The Examiner will then take your response, review any changes, consider any arguments, and ultimately generate a second Office Action.

With all Office Actions it is important to remember that you only have a certain amount of time to respond. In most cases, the applicant must respond to an Office Action within the specified time limit. If an inventor fails to respond in the allotted time, the examination stops, and the application will be deemed abandoned.  However, we are here to help you keep that from happening.
So, if you are faced with a first or a second Office Action – stay calm and consult with your patent practitioner.  It’s all just part of the process.



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