Office Actions

Posted Tuesday, May 01, 2012.

Once an application for a patent is filed, it goes into the queue at the USPTO awaiting an examination by a patent examiner.

If the examiner finds that the invention described in the patent claims is patent-eligible, useful, novel and nonobvious, among other requirements, the fortunate patent applicant will receive a Notice of Allowance, meaning the patent office will issue the patent upon payment by the applicant of the issuance and publication fees.

Unfortunately, it is rare for the first communication from the USPTO following the filing of an application to be a Notice of Allowance. 89% of the time, the patent claims are initially rejected. The news of that rejection comes to the inventor in the form of an Office Action.

In the Office Action, the patent examiner will communicate the roadblocks to patentability of the invention. It may be that the claim language is overly vague or imprecise. Or, it may be that someone else invented the same thing previously. It could be that the opinion of the patent examiner is that the invention is a trivial advance over what is known. Or, frequently, there is some combination of all of those.

In all cases, following the first Office Action, the applicant gets an opportunity to dispute the PTO’s assertions, amend claim language to make the claims more distinct from what is already known, or some combination of those. Usually, the applicant will file a response to the Office Action. The PTO does not charge a fee to receive and consider this first response. An applicant has three months to submit the response, although this time period may be extended up to three additional months by paying a surcharge.

The examiner, usually a couple of weeks to a couple of months after receiving the response, will consider the arguments and/or claim amendments contained within the response. If the examiner does not find the arguments and/or amendments persuasive, the examiner may reject the claims a second time. Or, the examiner may do additional searching and find new grounds of rejections. This unhappy news usually comes from the PTO in the form of a Final Office Action.

A Final Office Action essentially means that the PTO has finished the examination paid for by the applicant at the time of filing the application. The applicant has more options available, many of which involve additional fees to the PTO. For example, the applicant may dispute the findings in the Final Office Action and/or further amend the claims, and submit a response to the Final Office Action concurrent with a Request for Continued Examination and the corresponding fee. Another avenue is to appeal the final rejection to the Board of Patent Appeals and Interferences at the USPTO.

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