Receiving a patent office action from the U.S. Patent and Trademark Office (USPTO) can leave you uncertain about the status of your patent application. If the USPTO sends you an office action, the USPTO patent examiner reviewed your application and concluded that the information you provided does not demonstrate that your invention is patentable—yet. Office actions often ask you to provide additional information, clarify the information you included in your application, or amend it. Broadly, to respond to an office action, you read through what it says and, point by point, respond to the issues the examiner raises.
Jones IP Law’s patent office action attorney can help you respond to patent office actions. Founder Michael Jones combines a background in mechanical engineering with more than a decade of intellectual property experience representing technologies ranging from mechanical devices and manufacturing systems to computer software, machine learning, cloud computing, and digital asset platforms. If you need help with a patent or another type of intellectual property, we can help.
What Is a Patent Office Action?
After you file a patent application, the USPTO assigns a patent examiner to review your invention. The examiner reviews your application and evaluates whether your invention is patentable. If the examiner concludes your application, as is, does not demonstrate that you can patent your invention, they send you a written communication called a patent office action.
Patent office actions explain what the examiner concluded, why they reached those conclusions, and what you must do to continue pursuing patent protection.
How Do Patent Office Actions Describe Issues?
Examiners typically include two types of issues in patent office actions: “rejections” and “requirements.” The examiner issues a rejection if they conclude your application fails to demonstrate that your invention is patentable, meaning it is not:
- Useful,
- New,
- Non-obvious, and
- The type of thing one can patent.
You can often continue pursuing patent protection if you persuade the examiner that your invention truly is patent-eligible. Requirements sometimes involve administrative or procedural issues rather than concerns about the invention’s overall patentability.
What Rejections Can a Patent Office Action Include?
Patent law requires every invention to satisfy several legal requirements before the USPTO can issue a patent. If the examiner concludes your invention or patent claims do not satisfy one of those requirements, they reject the affected claims. Common examples include:
- Subject-matter eligibility—the examiner concludes your invention is not the type of thing patents protect;
- Novelty—the examiner concludes that an earlier patent, publication, or other public disclosure already describes your invention;
- Obviousness—the examiner concludes that someone with ordinary skill in the relevant field could have developed your invention using existing technology;
- Written description or enablement—the examiner concludes your application does not describe your invention completely enough that others can understand what you invented and how to make and use it; and
- Indefiniteness—the examiner cannot determine exactly what you are trying to patent.
Office actions can include multiple rejections.
What Requirements Can a Patent Office Action Include?
Common requirements include:
- Restrictions—if your application claims two or more independent and distinct inventions, you must choose one invention for examination;
- Drawings—changes to your patent drawings to comply with USPTO rules or more accurately illustrate your invention;
- Specifications—correction or clarification about portions of your written description; and
- Formalities—corrections involving inventor information, application data, reference numbers, or other procedural aspects of your application.
Like rejections, office actions can include multiple requirements.
How Do You Respond to a Patent Office Action?
Because patent office actions often involve both technical and legal questions, many inventors hire a patent office action attorney to prepare their response. After you receive the office action, review it with your attorney. They can explain what the examiner wants, advise you about your options, recommend a response strategy, prepare your response, and file it with the USPTO on your behalf.
Review the Office Action
After you receive the office action, review it carefully with your attorney to understand what, exactly, the examiner says the issues are and what, exactly, they want you to do. Your attorney often provides valuable insight into how the office action translates for your particular invention and what it means for your patent application at this stage.
Develop Your Response Strategy
After reviewing the office action, figure out how you want to respond. Depending on the rejections and requirements the examiner identified, your response may:
- Rewrite one or more patent claims to clarify what your invention covers,
- Describe the technical differences between your invention and any references the USPTO examiner compared it to, or
- Correct procedural or administrative requirements in your application.
Many patent office action response strategies combine several of these approaches into a single response. In some cases, you may request an examiner interview to discuss the application directly.
Prepare and File Your Patent Office Action Response
Next, you work with your attorney to prepare your patent office action response by implementing the patent office action response strategy that makes sense for your particular application. Usually, that means creating a written response that addresses each requirement or rejection individually.
Continue the Patent Examination Process
After you file your patent office action response, your patent examiner evaluates it. The examiner reviews your amendments, considers your legal arguments, and decides whether your application now presents a patentable invention.
Depending on the examiner’s conclusions, the USPTO may:
- Conclude that you appear to have a patentable invention,
- Issue another non-final office action if addressable concerns remain, or
- Issue a final office action to end examination.
If the examiner issues a final office action and ends, you typically have the opportunity to request review of that decision.
Work with Jones IP Law on Your Patent Office Action
If you receive a patent office action, you must respond before the USPTO deadline if you want to continue pursuing patent protection. Jones IP Law can help you analyze the office action you received, decide how to respond, and prepare and submit that response on your behalf.
Jones IP Law helps inventors, entrepreneurs, startups, and technology companies prepare strategic patent office action responses.
If you have received a patent office action, contact us to get started on your response.
Legal References Used to Inform This Page
To ensure the accuracy and clarity of this page, we referenced official legal and other resources during the content development process: