How to respond to office action

Table of Contents

1.1 First Office Action (OA)

1.1.1 How to handle an office action

1.1.2 First office action allowance (Ex parte Quayle)

1.1.3 Amendment in response to Office Action (OA)

1.1.4 How to request an interview with the examiner?

1.1.5 What happens if a response is not timely filed?

1.2 Second or Final Office Action (OA)

1.2.1 Notice of Allowance

1.3 Amendment in response to the final OA, if applicable

1.3.1 Reconsideration

1.3.2 Amendment

1.3.3 Request to continue the examination after a final office action Request for Continued Examination (RCE) Continuation application Continuation-in-part (CIP) Divisional application

1.1 First Office Action (OA)

Once your utility patent application has been approved by the PTO (typically within six months to two years), an examiner will review the case and report the results in a document known as a first Office Action (OA). You can apply for a status inquiry with the USPTO if you do not hear back from the PTO in the time expected.

The following may be included in this OA:

  • A description of any defects in your drawing/specifications;
  • Rejection of your application with detailed references to prior art the patent examiner used in support of anticipation or obviousness.

According to the PTO rules,

The first Office action must contain sufficient detail to clearly state the pertinence of each rejection and the manner in which the cited prior art was applied. The examiner can bodily include the claim chart or other material in the Office action if the request for reconsideration includes material, such as a claim diagram to explain a rejection and establish the existence of an important new question of patentability. However, the examiner must carefully review the claim diagram (or any other material) in order to make sure that all items included in a rejection statement clearly and fully address the patentability claims.

In addition, examiners must address any responses from patent owners to prior Office actions in actions that follow the initial Office action. Examiners who conclude that one or more claims are patentable over cited patents and printed publications should also indicate why they believe the claim(s). This is similar to the reasons for allowance.

Most applications are rejected at first. Don’t be discouraged. The examiner will give reasons for rejection. They will cite the existence of the element as per the patent laws or rules of the Manual of Patent Examination Procedure. The examiner will then show you if the references are compatible with your element. This will allow you to respond to the OA.

The response deadline is usually 3 months from the date of the OA’s mailing. However, it could be shorter. Please read the first 2 pages carefully to determine the deadline. It is not uncommon for an office action to object to drawings or application text. The rejections are typically based on prior art.

Objections to Drawings or Claims: You can respond by providing substitute drawings or proposing changes to the claim text and description.

It is common for rejections to contain 102 or 103 rejections after the 112 objection/rejection. The USPTO will reject your invention if it matches the text of the claim against certain portions of the prior art. In its rejections, the OA often cites statutes.

  • Section 102 rejections mean that the examiner believes your invention is identical to the prior art reference. This means that every element of your claim can be found in one reference.
  • Section 103 rejections mean that the invention is obvious in light of prior art. Usually, the examiner will refer to at least two references. Obviousness rejections based on only one reference are rare but possible. Rejections that are based on the combination of 4 or more references may be grounds for the line of reasoning that the examiner is using hindsight to reconstruct your invention.

If 102 is rejected, it means that the invention was not anticipated by a reference. Anticipation is when each part of the claims is met by the prior art.

1.1.1 How to manage an office action?

1. It is important to review the rejection and understand its reasons.

2. You should then respond to every point in the rejection. To track your arguments, you should be ready to amend the claims.

3. Next, contact the patent examiner to request an interview. During the interview, you can explain your position to him.

4. The examiner will send you a summary of the interview after the interview. You can reply to this summary if it is not satisfactory. The deadline for filing your response is usually three months after the Office Action was sent. Late fees are charged if you fail to comply with the deadline. The USPTO will automatically reject your application if you do not respond within the six-month deadline. You will have to resubmit it after paying a fee and petitioning again.

1.1.2 First office action allowance (Ex Partie Quayle)

While rare, it is viable to have a first office action allowance where the examiner allow the patent application once minor non-substantive issues such as minor drawing/specification/claim corrections are resolved.

1.1.3 Response to Office Action (OA)

Review the OA and consider any materials cited by the examiner. Then, conteplate how you can describe your invention in order to counter the examiner’s arguments. To address the issues raised by the patent examiner, you should draft an amendment. Include the following:

  • A summary of the amendment.
  • Reply to rejections by explaining in detail how your claims have changed or how you differ from the prior art.
  • Conclude your letter.

A response to an OA contains a section called “remark” where you make a complaint about the examiner’s decision to reject the application. It may also contain amendments to the claims. Note the response deadline on the second page. If you need to respond to substantive changes, it may take three months. However, it can take two months for simple actions like a restriction requirement or a request for a selection of claims to be examined.

1.1.4 How do I request an interview with my examiner?

The PTO offers a web-based service that allows applicants to schedule interviews with Examiners for their patent applications. The form can be retrieved at:

Within a few days, the examiner will reply to you. You can communicate electronically with the examiner by clicking the third button. You should also select Video Conference as the Type of Interview if you wish to use screen sharing and video conferencing to present your proposal.

1.1.5 What happens when a response isn’t received in time?

• Each office action has an expiration date. Typically, it takes 3 months to respond. If deadline is missed, your application will be considered abandoned. However, late fees can still be paid and the application can still be revived by filing revive, buying an extension from USPTO or opting for IP protection that is applicable to your idea.

Late fees applies if you fail to respond within the time limit. You can purchase time by paying late fees, but the case will be automatically abandoned if it is not responded to within six months of the office action. In such cases, the USPTO will issue a Notice to Abandonment.

You may be able, however, to save it by:

  • If the delay was not avoidable, you can file to revive your application. This must be done within six months from the date that your application was rejected, a fee is applied. Unavoidable means that your amendment was not received by the USPTO or that you have suffered from a serious illness.
  • If the delay was unintentional but avoidable, you could file to revive. This must be done within three months of abandonment. The fee for unavoidable delays is higher. You may have misunderstood the deadline on the OA.

If those are not viable options, you may:

  • Substitute an application. This is essentially a clone or copy of the abandoned application. It does not include the filing date from the abandoned application. Any prior art found between the filing date for the abandoned earlier application, and the current one can be used against it. Note that the USPTO will calculate the term date based on the filing date of the substitute application if it issues a patent. You will also have to pay fees, even though the abandoned application has never been filed.
  • If the case has not been published, you may be able to rely on trade secret protection.

1.2 Second or Final Office Actions (OA)

• Final Office actions are usually second office actions sent by the examiner following a review of the applicant’s response. You can choose to receive a reply as a notice of acceptance or rejection.

An examiner will review your amendment and either grant the case or send you a second OA, called a final office motion, two to six months later. The final office action will address any points raised by the examiner if they disagree with you. Again, you can amend your initial office action response and request another interview with an examiner.

1.2.1 Notice of Allowance

The United States Patent & Trademark Office issues a notice of allowance to inform that the invention is eligible for a patent.

You will need to pay the patent issuance fee. However, you will receive an issue notification months later, with the patent number, issue date, and patent number.

This means the examiner has determined that your application is patentable. The examiner grants you a patent.

Within three months from the notice, you must send the fee for patent issuance. This notice may also include formal drawings. After submitting formal drawings and paying the fee, you will receive an Issue Notice several months later. This will include the patent number as well as the date of the patent’s issue. You will then be issued the Letters Patent deed.

1.3 Amendment to the final OA, if any

You can respond to the following if you have been denied access to changing your claims. To decide what is best for you, it’s a good idea to speak with a patent attorney.

1.3.1 Reconsideration

Ask the examiner for a reconsideration of his/her final OA by phone, email, or in person. You should also file an after-file amendment. Although the USPTO prefers to communicate via written correspondences with applicants, patent examiners may be available for interviews in person regarding pending applications. The USPTO encourages applicants to communicate with examiners earlier and more effectively. The examiner can choose to agree or send an advisory motion that clarifies his or her position.

1.3.2 Amendment

As the examiner suggests, amend your claims. It is considerate to limit the claims by adding additional limitations.

1.3.3 Request to Continue the examination after a final office action

This can be done through: Request for Continued Exam (RCE)

An RCE is a form of payment that allows you to make another amendment after receiving a final OA. You can ask for the final amendment to be considered along with your arguments. The RCE form should be filed before the response deadline expires. This is usually 3 months after the final OA mailing date. Continuation application

• A continuation application is a request for a patent that adds more claims to an invention described in an earlier application.
• This type of application can be accepted if a patent examiner rejects other claims in an applicant’s application. It can also be used to illustrate the invention.

A continuation application can be filed while the original application remains pending. The continuation application uses the same specification or original application as the parent. It claims the priority date of that parent and usually names at least one of its inventors. This type of application is filed when the patent examiner has rejected some claims in an application or when you feel you have not exhausted all possible avenues to claim different embodiments of your invention during prosecution of the parent. Multiple continuation applications can be filed, with the filing dates being the same as those of the original application.

If successful, the USPTO will issue a new serial number to you and a filing date for your continuation. This is unless there has been an interference challenge. This continuation must be filed within three months after a rejection. Continuation-in-part (CIP)

• A continuation-in–part (CIP) is an application that builds on a pending application and adds subject matter.
• Two priority dates are available for the CIP: the date of the parent application as well as the date for the new matter.

A CIP is an application that was filed during the life of an older non-PPA/utility application. It repeats some or all of the non-PPA, and adds matter not disclosed in the non-PPA. CIPs have two priority dates: the patent filing date as well as the CIP filing day. This allows you to ask the USPTO for a continuation of your original application. You can thus bypass the bar to add new matter. Application to divisional

• A divisional patent application is a type of application that includes matters from a patent application.
• Although a divisional application may be filed later than the parent application, it still claims the same priority.

Sometimes, multiple inventions may be disclosed in one application. The USPTO can issue a “restrictions requirement” which restricts patent applications to one invention. Because the patent application fee is only for one invention, it doesn’t cover the examination cost. You will need to apply for a second application due to the issuance. You can file a divisional application to pursue one of the multiple inventions claimed in the parent application and the other inventions in any subsequent divisional applications.

While the parent application is pending at PTO, you must file a divisional. You will lose your right to claim priority to the parent patent case once the patent application is issued as a patent. Therefore, it is advisable to file a divisional application before paying the issue fee for the parent case. The specification of a divisional application is the same as that of the patent application, and it claims the priority date. The claims should focus on a different subject matter from the parent case.