After you file a patent application, you will wait between 6 months to 3 years to know if you can get a patent. At that time, the United States Patent and Trademark Office (USPTO) will review your patent application and may reject your patent application. An office action will explain the reasons for the rejection. What do you do now?
So, what is an office action? An office action is a written explanation of an examiner’s review of your patent application. The examiner may object to, reject, or allow the patent application in the office action. There are several types and responses to them:
- Filing receipt
- Notice to file missing parts
- Restriction requirement
- Office Action
- Final Office Action
- Advisory Action
- Notice of Allowance
- Ex parte Quayle action
- Examiner’s Amendment
If you’re interested in getting a patent, you’ll want to know all about office actions. I’ve been helping inventors get patents since 2004. Below, I’ve described various types of office action and some steps you might take in responding to them.
Various types of office actions and how to respond
1. Filing receipt
After you file your patent application, the Office of Patent Application Processing (OPAP) will check the preliminary aspects of your patent application. The OPAP conducts basic checks of the patent application. Are all of the claims numbers sequential? Do you have a description for each of the figures? Did you pay the required fee?
After the OPAP checks the patent application, they will send you a filing receipt. The filing receipt is a document that confirms various things about your patent application:
- First and foremost, it confirms the filing date of your patent application. The filing date is important because it tells you when you became patent pending on your invention. It establishes the date of your priority. If someone else files a patent application for the same invention, the one with the earlier priority date wins. If someone publishes a document related to your invention, then it isn’t prior art if your priority date is earlier than the date of publication of the document.
- It confirms the claim of priority of your patent application. The claim of priority lists other applications filed earlier that the instant application might claim as being related to each other. If so, you can get the earlier priority date.
- It establishes whether you can file your patent application in foreign countries. All inventors must get permission from the USPTO to file a patent in foreign countries. If you don’t get permission first, it may jeopardize the validity of the patent.
These are just a few of the most important things you need to check after receiving your filing receipt.
If nothing is wrong with the patent application, the patent application will go into the examination queue and on an examiner’s docket.
How Do I Respond to the Filing Receipt?
You don’t need to respond to the filing receipt at all. However, the Patent Office may send you a Notice to File Missing Parts along with the filing receipt. In this case, you have to respond to the Notice to File Missing Parts—more about that next.
2. Notice to File Missing Parts
The OPAP will check your patent application to see if it is ready for examination. If they find something was not completed or is improper, they will send you a Notice to File Missing Parts. The Notice to File Missing Parts allows you to fix certain deficiencies of your patent application.
Examples of deficiencies that you can fix:
- If you did not pay the correct governmental fee with the patent application, you could pay the correct fee later.
- If you did not file an Application Data Sheet (ADS), you could submit an ADS.
- If you don’t reference all of the figures in the description, you can fix the patent specification to refer to such figure(s).
Examples of deficiencies that you cannot fix:
- If you failed to explain a feature of your invention, you cannot amend your patent application.
- If you failed to show something in your drawings, you cannot modify your drawings.
How Do You Respond to a Notice to File Missing Parts?
The Notice to File Missing Parts will explain how to respond. If the instructions are not clear, you can call the Application Assistance Unit (Tel: 571-272-4000) to ask for clarification.
In general, the patent office gives you two months to fix the deficiencies. After two months, you can still file documents to correct the deficiencies, but you have to pay a progressively higher monthly extension fee. To learn more about extension fees, read below.
3. Restriction Requirement
After the OPAP determines that the patent application is ready for examination, the application is calendared on the examiner’s docket (i.e., a list of things to do).
Suppose the examiner thinks that the invention is complicated when he reviews your patent application. They will try to isolate various aspects of the invention and limit the review process to one aspect of the invention. This type of office action is known as a restriction requirement. Not all patent applications will receive a restriction requirement—only the complicated ones.
How to Respond to a Restriction Requirement
The restriction requirement is a common type of office action. I’ve written more about it and how to respond to Restriction requirement and potential responses to them. I’ve summarized the primary response below.
When you read a restriction requirement for the first time, you may not understand it and feel the examiner does not understand your invention.
You feel this way because the standard for “complicated” is much lower for the examiner. Under current patent rules, if there is a serious burden on the examiner to examine your application, the examiner can rightfully make the restriction requirement.
In general, the examiner does understand your invention.
If the examiner is dividing the aspects of the invention incorrectly, I would call the examiner to give them a better way to divide the invention. However, if the examiner is dividing the aspects of the invention correctly, I wouldn’t argue (i.e., traverse) the restriction requirement. I would elect an aspect of the invention for examination and let the other aspects go for now. You are not abandoning the other aspects of the invention. You can always seek a patent on those other aspects by filing another application.
4. Office Action on the Merits
After the restriction requirement, the examiner will examine the patent application to see if it meets all requirements to get a patent. The primary requirements are:
- That the invention must be novel (i.e., new)
- It must be non-obvious (i.e., not obvious in light of existing technology).
The initial office action will object to, reject, or allow your patent application based on these criteria.
Typically, the initial office action will reject your patent application. However, don’t be dismayed. Just over 50% of all patents in the U.S. are approved.
If Your Office Action is a Rejection, Is That the End?
No! If your patent application is rejected, you can file a response to convince the examiner to grant you a patent. The way to view rejections and objections is that it is merely the examiner’s view. We need to provide the examiner with new information to make a new decision – a decision to grant the patent.
For more information on responding to the office action, read how to respond to office actions.
5. Final Office Action
When you respond to the first office action, the examiner must consider your arguments and enter any claim amendments you have requested. That is not true if the office action is made final.
The office action is made final, typically after the first office action.
When the office action is made final, you only have a few different options in responding:
- You may be able to request an interview with the examiner.
- You may be able to get further consideration by filing an After Final Consideration Pilot (AFCP) Program 2.0, which gives the examiner a limited number of hours to consider your arguments.
- If the AFCP is unavailable, you will have to file a request for continued examination.
- You could also file a continuation patent application, but this takes your application to the back of the line for examination.
6. Advisory Action
An advisory action is mailed when a response to a final office action without a request for continued examination. Without the request for continued examination, the examiner is not required to put further work into examining the patent application. They will merely mail out the advisory action which tells you that your patent application is not in condition for allowance and that the time to respond is calculated from the mail date of the final office action, not the mail date of the advisory action.
7. Notice of Allowance
If you convince the examiner that your invention meets all of the requirements to get a patent, the examiner will mail out a Notice of Allowance. Once you pay the issue fee, then you will get your patent.
You ought to consider filing a continuation patent application during this period. A continuation patent application is merely a refiling of your original patent application. Remember the restriction requirement. You can seek a patent on those aspects of the invention that you did not elect for examination at this time. Plus, if you want to broaden the claim scope of what has already been allowed, you can do that through the continuation patent application.
To find out how to improve your patent protection with a continuation patent application, read the relevant section in my free book Navigating the Patent System. Read “Broadening patent protection.”
8. Ex parte Quayle Action
An Ex parte Quayle action is where the patent application is in condition for allowance. Still, there is a deficiency in the patent application related to the form of the patent application. For example, you may have to fix a number on the drawings.
9. Examiner’s amendment
An examiner’s amendment is one where the examiner amends the patent application upon the consent of the applicant. Typically, this happens when the patent application has one or two minor things that need to be changed before it can be allowed to grant as a patent. Instead of waiting for the USPTO to process an amendment filed by the applicant, the examiner can send out a Notice of Allowance with an examiner’s amendment.
Time to Respond to Office Action
Each of these communications will have its timeline as to when you are required to respond. Always check the letter or notice to find out that date and check in with your examiner, if needed, to clarify.
The USPTO gives you an initial period where you can file the response. This initial time is between 1 to 3 months. After that, you will have to pay an extension fee. For the USPTO to consider your response “timely,” the USPTO must receive a response no later than six (6) months from the date it was issued.
What If You Don’t Respond to an Office Action in Time?
If you don’t respond to the office action in time, the USPTO will abandon the patent application. You will also lose all fees submitted to the USPTO.
For most office actions, you will be able to get an extension – provided you pay a fee. The USPTO has a fee chart just for this purpose.
When Do You Pay Extension Fees?
Do you pay them before the due date? Do you have to pay each month? No, you pay the extension fee when you file the response to the office action. For example, if the office action was mailed on January 1 and provides a 1-month window to respond, but you file the response on June 15, you pay a 4-month extension fee on June 15.
Here is the breakdown:
- The office action was mailed on January 1.
- It gave you one month to respond, which means that you could file a response without paying the extension fee on or by February 1.
- Between February 2 and March 1, you have to pay a one-month extension fee.
- Between March 2 and April 1, you have to pay a two-month extension fee.
- However, if you wait until June 15 to respond to the office action, you must pay a six-month extension fee. June 15 is the sixth month after the due date to file the response.
In general, the Patent Office provides up to six months to file the response. They give you a period in the beginning to file the response (typically 1 to 3 months) without payment of a government fee. The office action itself will explain how many months/days you have to file the response without paying a government fee. If you don’t file the response within that period, you need to pay extension fees.
Just because you can pay the extension fee after the due date, that does not mean you can pay as late as you want. You can’t wait 12 months to file the response. In most cases, the patent office will allow you to submit a reply within six months of the mail date of the office action.
Moreover, if you fail to file the response in time, if it is unintentional, then you may be able to revive your patent application. You may need the help of a patent attorney in this case.
How Long Will It Take Before You Receive an Office Action?
After you apply, the USPTO has to work through its backlog of applications for examination. After that, the USPTO will examine your patent application. The examination process is on a first-come-first-served basis. Once it’s in the system, you can check on it on the USPTO website’s aptly named “First Office Action Estimator.” You’ll need to know the Group Art unit or your Class and Subclass of your patent application. You can find that information on your filing receipt.
Group Art unit – All of the examiners at the USPTO are separated into different technical fields and put into group art units. An art unit is, literally, the unit of people working on your case. It’s a group of examiners led by a supervisory examiner, and it’s their job to determine whether an idea/application is patentable or not.
Class – USPTO has different classifications for inventions. More than 45 of them for different categories of products and services. Your patent application will be categorized into one of these classes. It is a way for USPTO to speed up the searching of documents. Instead of doing keyword searches in the entire database that might result in extraneous search hits, you can do keyword searches in a narrow class directed explicitly at your invention. By doing so, you will have a better result list.
Subclass – This is, of course, a further classification of the invention to help others search for your patent.
Do You Need a Patent Attorney?
Ask a patent attorney, and you’ll hear “yes!” But it’s not just because they want your business. With the perusing you’ve now done through the USPTO website and the information you’ve gleaned through this article, you can see there are many steps involved. And steps within steps.
There are rules and regulations for every part of the patent process, and while you can write a patent yourself, it can be complicated, tricky, and challenging. It doesn’t hurt to have a patent attorney on your side to advocate for you throughout the process. After all, you’re probably an inventor and not an expert on patent law.