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What is a Patent Office Action?

According to the United States Patent and Trademark Office (USPTO), an office action is a “written correspondence from the patent examiner that requires a properly signed written response from the applicant in order for prosecution of the application to continue.” Office actions may object to the way a certain drawing appears in the application and format issues in the application as well as reject your patent on novelty grounds. Common examples of office actions include non-final office actions and final office actions. Replies to office actions must directly respond to each point of rejection stated by the examiner in the document.

Key Takeaways

  • An office action is a written notice from your patent examiner at the United States Patent and Trademark Office (USPTO) that requires a written response from the applicant.
  • Office actions typically reject or object to certain aspects of the patent application, such as its format or novelty of the product.
  • Most office action responses must be sent within 6 months of the mailing date of the office action.

Final vs. Non-Final Office Action

Patent office actions are generally divided into two main categories: final office actions and non-final office actions. The first type of office action you will likely receive is a non-final office action. The document will stipulate the specific issues with your patent application. In most cases, non-final office actions will point out cases of prior art, proving that your patent is not original. In the document, the examiner will reference specific claims in your application and explain where they can be found in prior art. 

Final office actions are typically issued when the patent examiner chooses to reject your response to a non-final office action. This office action may include the same rejections as the initial non-final office action, or it may feature new rejections. Applicants should respond to final office actions in the same way that they would respond to any other office action, except in these cases, the applicant may be asked to pay an additional fee to further amend claims in the patent application.

Responding to an Office Action

If you have received an office action from your examiner following the submission of a patent application, do not ignore it! They are important steps of the patent application process and in most cases, you must issue a reply to them within 6 months of the action’s mailing date. The USPTO does not offer any leeway regarding this 6 month deadline, and if you do not respond to the office action on time, your application will be considered abandoned. 

Replies to office actions can be submitted via the USPTO’s electronic filing system on their website. Alternatively, you can mail or fax your response to the USPTO.

Bottom Line

Have you recently received an office action and are uncertain about how to respond? Not to worry, our team of top-tier intellectual property lawyers are here to help. Do not wait until the last minute to contact a patent attorney before your office action response deadline.

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