How do you respond to a patent office action?


If you’ve received an Office action from the United States Patent & Trademark Office (USPTO) after you’ve submitted your patent application, what now?

What type of patent office action is it?

If it is a rejection, then most likely the patent office is pointing out a problem with your application. This could lead to an abandonment if not addressed promptly and correctly. There are different types of Office Actions you might receive, including:

  • Application Filing Receipt
  • Notice to File Missing Parts
  • Notice to File Corrected Application Papers
  • Notice of Omitted Items Application
  • Ex Parte Quayle Action
  • Non-Final Rejection
  • Final Rejection
  • Notice of Allowance and Fees Due
  • Issue Notification
  • Post Grant
  • Patent Expiration

If you’ve received a rejection then essentially the USPTO is pointing out an omission, an error, or a reason that your application may be refused based on the grounds of the patent law itself (such as obviousness). Whether you prepared your patent application on your own or via a service such as Legalzoom, or retained the services of a patent attorney, at this stage in the process it is important that you consult with an expert in the field of patent law in order to be sure that you’re correctly addressing the issue at hand. You want to avoid a situation where you do not fully or properly rectify the reason for the Office action. A patent attorney will be experienced in the right way to address such issues to give yourself a better chance of a successful application. In order to have a better idea of what the next steps for your application will be, here are some ways to properly respond to an Office action.

File a timely response

It’s important to respond to your Office action as soon as possible. For a rejection, the patent requires a response within three months to avoid incurring fees, and your application will be abandoned if you do not respond within 6 months. There is often a reasonable amount of background work and preparation that will go into the response, so you need to begin the process right away. Depending on the details of the Office action, your patent attorney may need to conduct research and work with you on the details of your patent application in order to provide the strongest possible response. Give yourself a greater chance of success by accounting for that time.

Study the office action

The USPTO may issue an administrative Office action, or a substantive Office action. Administrative Office actions come as a result of an error, omission, or inadequate or unclear information about your application, such as a problem with your application data sheet, or missing oath or declaration. Administrative Office actions require you to provide more information or clarify something on your application, and it’s important to remember that a patent attorney will be well-versed in exactly what kind of information the patent office needs in order to consider your application for approval. The patent attorney looks at your product or service differently than you do – what may seem like complete information to you may not be adequate for the purposes of the USPTO.

A substantive rejection means that the examiner does not see your mark as fit for approval on legal grounds such as obviousness or non-patentable subject matter. In this case, your need to take action such as making an amendment or presenting a legal argument as to why the patent application should be allowed. Patent law is incredibly complex – presenting a legal argument is often a case not only of researching facts to support your case, but also knowing how to craft an argument to suit what the patent office typically looks for in order to move forward with approval.

Be aware of final vs. non-final Office actions

A non-final Office action is your first notice of the problem with your application – it’s your initial chance to correct, amend, or clarify the reason why the examiner could not approve your application in its current state (non-final Office actions may be either administrative or substantive). Essentially, it is your chance to present an argument to your examiner. A final Office action, on the other hand, means that your application is in final review. On a final Office action, the examiner is giving you one final opportunity to fix the error in your application. However, when the US Patent Office named the final office “final,” it made a mistake. In Japan, a final rejection is truly final. It’s the end of the line. But here in the US, our “final” office action is just an action that opens up several options for response.



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