Office Action on Patent: Reasons & Solutions

Merely drafting a patent application and filing it with USPTO doesn’t guarantees patent grant to your invention. Yes, even if you have filed the best patent draft, there are still chances that your application can face rejection from USPTO. Hence, office action is basically the rejection report of patent application by USPTO. You receive office action because, after patent filing, your application undergoes scrutiny by an examiner at patent office. If he finds any irregularities in your application, he gives you a rejection. Hence, it is your responsibility as an inventor to make sure your draft is completely correct.

However, to prepare an office action free patent draft, you need to understand the patent application parameters of patent office. It means knowing the reasons that can bring you an office action. This article tells you that only. So read it till end and find the reasons that you must avoid to prepare an error free patent application draft.

Also read: Patent Filing Strategy for Building Stronger Patent Portfolio

What to do When Your Patent Receives Office Action?

First of all don’t get panic or feel insecure about the patent office action. It is common for an inventor to receive an office action. Your, some or all of the patent claims may get reject due to many possible reasons. But always remember, initial rejections are always put under the category of non-final office action.

Hence, you also get the option to respond to office action. Yes, the examiner allows the inventor to file a USPTO office action response. In the response draft you can argue against the objection of examiner. If you don’t have enough evidences to argue, you can amend your patent application to overcome the objections of examiner. 

But understand that you will not get a chance to give response to final office action. Hence, your non-final action response draft must be prepared under guidance of a patent professional. As, if you receive second rejection, it is almost the final office action.

Also read: Patent Office Action: Different Types of It

Common causes of office action, and how to correct them

So now you know, what are the steps to take once you receive an office action from USPTO? However, before giving response to office action you must know what can be the possible reasons that can make your patent application face rejection from USPTO. Points below, tells you about the same, and it also tells what you should do to overcome such rejections. So read till end and clear your confusions:

Incorrect Application Format:

Improper application format is the most common and most basic cause for office action. Since it is the most basic cause, hence it is most easy to solve also. Your application might contain formatting issues such as line spacing, font size, header format space, etc. However, these are minor issues, the significant issue that matters is, how the claims are written. Examiner starts with his scrutiny by reading claims first, and hence finds out if they are well written or not.

Thus, if the description of your invention lacks proof to support the claims, the claims will face rejection from examiner. The other scenario may be description is fine, however, claims are written poorly, unorganized, incomprehensive, etc. In such cases also, your application faces rejection.

How to solve it?

Now, you got the reason, hence it’s easy to solve it as there is just minor editing you need to do. Thus, if you receive no other objections from USPTO except for this, then simply edit the claims. And editing should be in a manner that it properly reflects the applicability and scope of invention.

However, doing it alone can again make you suffer with office action. Hence, it is advisable to hire an IP Paralegal professional who can help you with this. They are the trained experts who have in-depth knowledge of patent related legal matters. Thus, taking their help will make you produce patent application with well written claims.

Non-novel invention seeking patent:

Once you claims are found okay and application as a patentable subject matter, the examiner now proceeds with checking the novelty of your invention. For this, he may conduct a patent search to find the relevant prior arts. Prior arts are similar inventions and information in public domain before the filing date of your application.

Thus, if your claims appear to be already existing in public domain, the examiner marks your claims as prior art. Hence, you will receive office action for the issue of prior art or non-novel invention. However, whole of your application will not face rejection. As examiner compares all the claims of your invention with all the claims of prior art. Hence, the claims that match with the prior art claims will face office action. If all the claims are found to be matching, then all the claims will face rejection.

How to solve it?

The solution to such type of office action is a bit complex, but very easy to understand. You can proceed in two ways to resolve this:

  1. Make an attempt to argue and prove that claims are not identical as found by examiner.
  2. Deleting or amending the claims referred as prior art by examiner, such that they are no longer a prior art.

So you can proceed with combination of both, as you cannot argue against every claim objection of examiner. Hence, it is advisable to convince the examiner that majority of your claims are novel. And the least important claims, still offending the novelty of your invention, you can amend or delete them.

So whatever way you choose, you should always have a phone interview with the examiner. It gives you the opportunity to understand the reasons of rejection by examiner. Hence, you can easily understand that how to amend claims to satisfy the examiner. Or what are the ways in which you can argue and convince the examiner on novelty of your claims.

Thus, a phone interview with the examiner will give your clear perspective of what you should to get your application approve from the examiner.

Final Office Action:

First office action is always non-final so that you can improve upon the objections of examiner. So if you are not able to address or overcome all the issues during the first office action, you receive a final office action. So, you can understand final office action as the call where patent examiners tells you that time allotted to your patent application is up, and it still isn’t meeting the criteria of patent office.

But this is not the end of the road for your invention. So, if you are still willing to put more money and effort into the prosecution process. You have three options at this point: accept the rejection and abandon the application, refile the application with changes, and request for continuous examination.

Conclusive Remarks:

Refiling the patent application after receiving final office action still doesn’t guarantees you the patent grant in future. So make every effort to get the patent grant without facing any office action. Even if you face it, then make sure you clear all the objections of examiner in first office action only.

As moving to the later stages of office action, and still assuming that you will get patent grant by meeting the objections, is nothing but waste of time and money effort. Thus, to help you meet all your office action response, you need to hire an office action patent paralegal. And we believe we “Patent Paralegal Force” can do it best for you.  

Our work force consists of trained and experienced patent experts who have in-depth knowledge of all the technical domains. Thus, taking our help will make you produce patent application with well written claims. Customer satisfaction is the priority for us, and hence. Our state-of-the-art tools help us to give the services you desire for. Read more about us here.

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