How to Read an Office Action. Episode 43

(This episode first aired in 2018. Some of the information, such as costs, have changed.)

Understanding Office Actions

In the last two episodes, I discussed objections and rejections. Now, how do you know if you’ve received a rejection or an objection? You’ll get a letter from the patent examiner listing the objections and rejections, along with the reasons why your application has been objected to or rejected. This type of correspondence is called an Office Action, or the First Office Action on the Merits.

Before receiving an office action on the merits, you may receive other correspondence from the USPTO. This could include notices indicating that your declaration was incorrect, that you failed to fill out a form properly, that pages are missing, or that you have received a Restriction Requirement. I’ll cover Restriction Requirements in another episode, but essentially, they occur when the examiner believes that your application includes more than one invention, requiring you to choose one for examination first. These types of notices are not considered to address the merits of your invention.

What an Office Action Looks Like

An office action is a letter from the patent office that contains several sections. On the first page, you will find information about your application, including the application number, filing date, inventor’s name, examiner’s name, art unit, and the notification date.

The notification date is important, and I’ll explain why shortly.

The next page includes a summary section. At the top, you’ll see the period to reply, which is crucial. The first thing you should do when you receive an office action is write down the due date. Most rejections and objections require a response within three months. The office action will state that there is a shortened statutory period of three months from the mailing date. It is called shortened because you actually have up to six months to respond, but after the initial three months, you must pay extension fees.

Deadlines and Extension Fees

If you respond within three months, there are no extra fees. If you need more time, you can extend the deadline up to three additional months by paying fees. The extension fees increase with each month:

• First month extension: $50, $100, or $200 depending on your entity status (micro, small, or large).

• Second month extension: $150, $300, or $600.

• Third month extension: $350, $700, or $1,400.

These fees change periodically, so always check the latest USPTO fee schedule.

For example, if you receive an office action on January 1, 2018:

• If you respond by April 1, you don’t pay extra.

• If you respond between April 2 and May 1, you must pay a one-month extension fee.

• If you respond between May 2 and June 1, you must pay a two-month extension fee.

• If you respond between June 2 and July 1, you must pay a three-month extension fee.

If the deadline falls on a weekend or holiday, you can file the next business day without incurring an additional fee.

There are rare cases where you may get five-month extensions, but for most office actions, the three-month and six-month rule applies. If you don’t respond within six months, your application goes abandoned. While you can file for revival, it is expensive and may cause complications later. I will cover patent application revivals in a later episode.

Final vs. Non-Final Office Actions

The next section of the office action is the status section. The most important part here is Box 2a, which indicates whether the action is final or non-final.

Your first office action will typically be non-final. This means you can respond normally without additional procedural steps. When drafting your response, you will simply state, Response to Non-Final Office Action, and argue why your claims should be allowed.

If you receive a second rejection, it is often called a final office action. However, don’t panic—this doesn’t mean your application is permanently rejected with no further options. There are at least six or seven different ways to keep your application going after receiving a final office action, and in many cases, you may simply need to pay additional fees to continue prosecution. I will cover how to respond to final office actions in future episodes. For now, just know that your first office action should be non-final.

Disposition of Claims

The next section is Disposition of Claims, where the examiner lists their decisions on your claims. This section outlines:

• Which claims are still pending.

• Which claims are withdrawn.

• Which claims are allowed, rejected, or objected to.

• Whether claims need to be divided due to covering more than one invention.

Hopefully, at least some of your claims are allowed, but if none are, don’t worry—there are ways to address this.

Application Papers Section

This section lists any issues with your specification or drawings. The specification refers to the written description of your invention. If there are issues, they likely involve missing parts such as the abstract or required sections.

For drawings, objections may arise if reference numbers are missing or unclear. These objections will be detailed in the later sections of the office action.

Priority Under 35 U.S.C. §119

If your application claims priority to another application, this section will confirm whether the USPTO has received the priority application. If your application is a national stage of a PCT application or originated from a foreign application, this section ensures that the patent office has the original priority documents. If the USPTO has not received them, you may need to take additional steps to provide the priority documents.

Attachments

The attachments section lists any additional documents included with the office action. These may include:

• A Notice of References Cited.

• An Information Disclosure Statement.

• An Interview Summary if discussions with the examiner have taken place.

Examiner’s Detailed Rejections and Objections

The remaining pages provide detailed explanations of why your application was rejected or objected to. These can range from a few pages to over 50 pages, but a typical office action is around 10 double-spaced pages.

One document included will list the search terms the examiner used when searching for prior art. Another key section will specify which prior art references the examiner is using to reject your application. Generally, the examiner won’t provide the actual references unless they are foreign patents or non-U.S. documents that aren’t easily accessible.

What to Do When You Receive an Office Action

The first step is to search for the prior art references cited by the examiner. Create a folder labeled References or Prior Art and store all the cited references there. These references will be crucial when drafting your response.

I recommend opening the references in Adobe Acrobat and running OCR (Optical Character Recognition) so that you can perform text searches within the documents. This makes preparing your response much easier.

There are many other steps involved in responding to an office action, but this episode serves as an introduction to how to read and understand one. The key takeaways are:

• Calendar your three-month and six-month deadlines.

• Note the intermediate four-month and five-month deadlines for extension fees.

• Check the status of your claims to see which are allowed, rejected, or objected to.

I’m Adam Diament, and until next time—keep on inventing!