Getting an office action doesn’t always mean your patent application has been denied. Find out more about office actions and how to respond to them.
Find out more about Patents
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by Jane Haskins, Esq.
Jane has written hundreds of articles aimed at educating the public about the legal system, especially the legal aspe...
Updated on: February 7, 2024 · 3 min read
Once you have filed an application for a patent with the U.S. Patent and Trademark Office (USPTO), your application will be assigned to a patent examiner for review. When a patent examiner or other official at the patent office communicates with a patent applicant, the communication is called an “office action.”
A patent office action should not be confused with a trademark office action. Although both come from the USPTO, a trademark office action signifies an issue with a trademark application and has nothing to do with patents.
Most patent office actions provide a patent examiner’s opinion as to whether the claims in the patent application are patentable. Patent office actions are very common, and receiving one does not mean that your patent will ultimately be denied.
Some of the most common reasons for patent office actions are:
Non-final office actions: If the examiner believes there is a problem with your application, either because you have not complied with all USPTO requirements, or you have not submitted a patentable invention, you may receive a non-final office action. You can respond to a non-final office action by explaining in writing why the examiner’s position is incorrect, or by amending your application to resolve the problems identified in the office action. As mentioned above, office actions are extremely common and do not necessarily indicate that your application will be denied.
Final office actions: If your response to the non-final office action does not resolve the issues with your application, you may receive a final office action. Your options for responding to a final office action are more limited. You are only allowed to make amendments that the examiner has indicated will make the application allowable. You may also file an appeal with the Board of Patent Appeals and Interferences or a Request for Continued Examination (RCE), which opens the application up for further examination.
Advisory actions: If you amend your application in response to a final office action and the examiner is still not satisfied, you may receive an advisory action, which is essentially an office action that explains exactly what amendment will be allowed. You can either amend your claims to conform to the requirements of the advisory action, file an appeal, or file a Request for Continued Examination (RCE).
You usually have two or three months to respond to an office action, depending on the type of office action. However, you may have only one month to respond to a restriction requirement. And in certain circumstances, an office action will specify a different response period.
If you are not used to dealing with office actions, you may be confused about what you need to do to resolve the issues with your application, or you may feel uncomfortable making an argument or negotiating with the patent examiner yourself.
For these reasons, you may want to consult with a patent lawyer before responding to an office action.
If you need to speak to a patent attorney about a patent office action, you can ask questions and get advice from an attorney through the LegalZoom business legal plan for a low flat fee.
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