A normal part of the patenting process—known as “patent prosecution”—is handling US Patent and Trademark Office (USPTO) office actions. An office action is an official communication often containing objections, rejections, and stipulations concerning your patent application needing to be appropriately addressed for your invention to be granted patent protection. In this post, we’ll dive into the process of effectively responding to these communications, helping you navigate this milestone on your intellectual property journey.
Step 1: Take A Deep Breath
Getting at least one office action in a patent application is normal. In fact, a study of patent applications between 2009 through 2019 showed over 80% of applications that are eventually approved receive at least one. Most patent attorneys will confirm that receiving an office action is to be expected, and that, in most cases, not receiving one is a sign that you did not claim your invention as broadly as you could have.
So take a deep breath, remember an office action isn’t the end of your patent application, and let’s get to work.
Step 2: Understand the Office Action
The first step in addressing an office action is understanding what it says—and what it doesn’t say. An office action does not mean your patent application is lost, and in fact, receiving at least one is normal. An office action may be “non-final” or “final.” Non-final office actions are preliminary and invite responses, while final office actions can be appealed or involve new arguments and amendments, which can lead to an appeal or Request for Continued Examination (RCE). In addition, you might face objections, such as informalities that need correction, or issues like an examiner’s request for clarification. It’s crucial to carefully study the office action to understand what the patent examiner is communicating.
Types of Office Actions
Office actions can be “non-final” or “final.” But, before trying to understand which is which, it is helpful to understand what a prosecution cycle is. The easiest way to think of a prosecution cycle is as a sequence of a non-final office action followed by a final office action. Sometimes either office action is not a non-final or final office action, but a notice of allowance. Rest assured, it is more common to receive a first non-final office action than a “first-action” notice of allowance unless your application targeted fast allowance (a strategy we occasionally employ with clients).
In the prosecution cycle, you have the right to amend & argue following a non-final office action. If the examiner does not accept your arguments or amendments as overcoming the grounds for rejection or objection, the examiner will issue a final office action—which is not to be confused with being a final disposition of the case. Final disposition is either issuance of a patent or abandonment of the patent application—until either happens, the patent application is live. With that understanding, we can get into the two main types of office actions.
What Is a Non-Final Office Action?
Non-final office actions indicate the examiner found certain issues with your application needing to be addressed before the application can proceed. This might be because the claims are—in the examiner’s eyes—unclear, not novel, obvious, or because the application has not met some formal requirement. In some cases, it’s possible to force a subsequent non-final office action instead of a final office action using legal tactics.
What Is a Final Office Action?
Final office actions reply to your response to a non-final office action, and unless you take action to extend the case into appeal or another prosecution cycle, the application will be abandoned. After receiving a final office action, you may file an RCE, an appeal to the Patent Trial and Appeal Board (PTAB), or make amendments to the claims that do not broaden their scope. Note, this doesn’t necessarily mean the end of your patent pursuit, but it requires you to take specific steps—which often include additional government fees—to continue the process.
Step 3: Respond to the Office Action
Once you understand the office action, it’s time to respond. Typically, a reply to an office action “on the merits” containing rejections or objections to your application must be made within three months of the office action’s mailing date. This period can be extended—with additional government fees—up to a total of six months from an office action’s mailing date. If no response is made within six months, the application is automatically abandoned.
- Analyze the Examiner’s Rejections or Objections: Understand the examiner’s basis for rejecting the claims by thoroughly reading the references cited by the examiner and comparing them with your claims in view of the applicable statutes, regulations, procedures, and case law.
- Craft a Comprehensive Response: Your response should address each of the examiner’s points. Include arguments backed by legal and technical reasoning for why the examiner should withdraw each rejection. In some cases, it might be necessary to amend the claims to overcome the examiner’s objections or rejections. However, this must be done carefully, as you don’t want to unduly narrow your invention’s scope.
- Claim Amendments: If required, you may need to amend your claims to distinguish your invention over the cited prior art. When amending, be careful not to unintentionally narrow your claims more than necessary or introduce new issues. Any claim amendment should be accompanied by a statement explaining the amendment’s purpose and how it overcomes the examiner’s rejections, as well as a basis of support for the amendment in the original specification.
- Arguments and Declarations: You may also argue against the examiner’s rejection by providing a detailed explanation of why the examiner’s interpretation of the prior art or the application is incorrect. You can support your arguments by citing case law or the MPEP (Manual of Patent Examining Procedure). In some cases, you might need to submit a declaration under 37 CFR 1.132 to provide additional evidence to prove the novelty or non-obviousness of your invention.
- Interview with the Examiner: In some cases, it may be beneficial to request an interview with the examiner. This allows for a direct dialogue, which can often clarify misunderstandings and pave the way to a more tailored and persuasive response.
Filing the Response
After crafting a comprehensive response, the next step is to file the response with the USPTO. This can be done electronically using the USPTO’s Electronic Filing System (EFS-Web) or PatentCenter. Ensure that all accompanying fees are paid if necessary, and retain a receipt of the filing.
A Note on Professional Help
Although it’s possible for inventors to respond to office actions on their own, the process is often complex and requires an in-depth understanding of patent statutes, regulations, procedures, and case law (for which patent attorneys must pass a separate bar exam in addition to their state bar exam). Professional assistance from a patent attorney can be beneficial, and in some cases, essential. They can provide valuable advice, craft a persuasive response, help avoid potential pitfalls, and help you leverage response tactics learned through years of experience.
Cost for a Patent Attorney Handle an Office Action
The attorney fees for handling a response to an office action from receipt of the office action through filing the response do vary based on the amount of work needed to analyze and prepare the response, but often are in the range of $1,750 to $3,500 as of this writing.
Receiving an office action from the USPTO is not the end of your patent application. Rather, it’s a hurdle that, when properly addressed, can bring you one step closer to securing your patent. With a thoughtful, comprehensive response, you can overcome the examiner’s objections and continue on the path to protecting your invention. Remember, when in doubt, seek help from a patent professional who can guide you through this process and increase the chances of success.
The world of patents can be challenging to navigate, but with knowledge and appropriate action, you can turn office actions into opportunities, bringing you closer to securing the protection your invention deserves. Don’t let an office action dissuade you from your patent pursuit. Know they’re more common than not, respond effectively, and keep innovating!