Contents of an office action
An Office Action generally refers to a document generated by an examiner at the Patent Office and mailed to an applicant regarding:
1) the rejection or allowance of claims in a patent application;
2) conformance of the patent specification with the patent laws; and
3) other patent formalities.
Example Office Action
Here is an example of an office action.
Office Action will provide reasons for rejection
The Office Action may indicate all claims as being allowed. However, typically, the Office Action will identify a set of prior art references which the examiner uses to reject the claims of the patent application as being anticipated (i.e., not new) or obvious in view of the prior art references. You should read the Office Action very carefully because the examiner gives reasons for rejecting the claims. These reasons could form the basis for amending the claims to overcome the examiner’s rejection. The Office Action provides insight as to the examiner’s train of thought and subject matter that the examiner may consider to be patentable.
Time periods for reply
The Office Action will provide a time period (e.g., three months) in which the applicant must file a response addressing each objection and rejection identified by the examiner. In certain situations, the response may be filed after the stated period upon payment of a late fee.
The tone of the reply should always be courteous (MPEP Section 714.25) yet it should clearly explain the reasons that the examiner’s rejections and/or objections are incorrect. The examiner is the gate keeper and determines whether you will be granted a patent. In my experience, a courteous tone will provide the best opportunity for obtaining allowance of a patent.
Info in MPEP
For more information on the substance and procedure of Office Actions, review Manual of Patent Examining Procedure (“MPEP”) Chapter 700 and MPEP Chapter 2100. The MPEP provides numerous other sections relating to Office Actions which are listed in the index.
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