Patent Office Action: Different Types of It

Are you an inventor looking to get patent grant for your invention? If yes, then you need to file the patent application with USPTO. However, the process is time taking and may take up to two years before the examiner at USPTO takes a final call. It is regarding whether to issue patent to your invention or not. Examiner examines your application on all the parameters, and if found inappropriate you receive patent office action.

Thus, not developing an USPTO friendly application will make your patent dream take more time to get into reality. And if even after office action you don’t improve the application and refile, you will face permanent rejection.

So do you want to waste your valuable time and money in receiving office actions? If not, then read this article in full where we tell you about all the possible reasons that can hand you the office actions.

Also read: How to draft a patent application?

What Is An Office Action?

Before we move on to understand what can bring you an office action. Let’s start with understanding what is an office action? What do you understand from it or what it means when you hear the term office action? Here is your answer.

Patent Office action is a report that USPTO sends to you after examining your patent application after 15-18 months. It includes all the reasons that examiner has found inappropriate in your patent application.

Thus, patent office action is a report that summarizes the reviews of examiner at USPTO of your patent application. It will tell you the reasons on why claims in your patent application are invalid. Hence, you will get to know the reasons for rejection of your patent application.

There may be instances when examiner finds that your claims cover multiple inventions. Hence, he will issue you a restriction requirement. It means, you need to segregate your claims into multiple relevant groups and then select one claim group for which you want your application to be considered.

Also read: How to tackle Office Action?

What Types of Action You Can Receive?

Depending upon the nature of findings and whether they can be corrected or not, your patent application faces two types of office action. They are:

  • Non-Final Office Action
  • Final Office Action

Let’s discuss both of them in detail in below paragraphs.

What is a Non-Final Office Action?

Non-final office action is generally the one where you can appeal against the objections of patent examiner and prove them wrong. The objection in non-final office action includes existence of prior arts on your patent claims.

The examiner studies your claims and applies the relevant prior arts if any exists, to your patent claims. He also details the exact reasons as to why these claims are already cited in the referred prior art. All this is sent to you in a report called patent office action report.

Your job is to hire an IP paralegal that helps you in filing office action response to the patent office. They sit with you to study the office action report and prepare a detail plan to respond to the office action.

General ways of responding to a non-final office action is following:

  • You can find evidences and proofs with the help of your IP paralegal and present counter argues. It means, using these evidences you can prove that the mentioned prior arts don’t contain the claims of your patent application.
  • Other scenario is, when you can’t prove your claims novel which is referred by examiner in prior arts.  Thus the only option now left is to amend your infringing claims that do not infringe the prior arts after amending.

Thus, the ultimate aim of office action response should be the combination of both the ways you read above. Ask your attorney to draft an office action response sample that has combination of claim amendments along with diligent arguments. The arguments must poignantly define how certain claims in your patent application are not present in the referred prior art by patent examiner.

What is a Final Office Action?

As the name suggests it is the last office action that you receive from the patent office. What happens is, even after your reply to non-final office action, if the examiner is still unsure in giving you the patent grant, he hands you the final office action. The reason for same is, your non-final office action response still didn’t clear the objections of the patent examiner. However, final office action is hardly a final action as its meaning coming out.

It is because you can refile the response which will again start from non-final office action if any objections are still there.

So what is the significance of final office action? Here is your answer.

Patent examiners get tons of patent applications to review and give patent grant. Hence, they cannot spend unlimited time on a single application. They have to completely review and close each application in a specific time period.

Thus, if your response to non-final office action fails to comply with the objections of examiner, the examiner doesn’t waste his time and hands you the 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.

Also read: Patent Filing Service: How it benefits you?

How to Avoid Receiving Final Action?

Although the final office action is not final as you read above. However, you still want to avoid it because you need to refile your patent application from starting again. This means, spending additional 12-18 months in waiting for the review from patent office after the refiling of patent application. It wastes your time, money and resources together. Hence, you should try to close all the objections in non-final office action response only.

Best way of doing this is to be clearly aware of all the objections of patent examiner in non-final office action report. Thus, you can ask your IP paralegal services provider to conduct an examiner interview before you file the office action response.

The benefit of conduction interview is the examiner may hand you important insights of the office action report. Referring to these insights you can understand the patent office action report in a better way. Thus, you can amend your claims and arguments in such a manner that properly satisfies the concerns of patent examiner in the non-final office action.

Patent Paralegal Force: Your Partner In Saving Your Patent Application from Rejection

Your IP has the power to revolutionize your organization, and hence you need the best guidance. The guidance you seek will also help you in taking correct business decisions. That is where the role of “correct patent office action response draft” becomes significant for you.And this is what we at, “Patent Paralegal Force” do it for you.

Working with experience of 10+ years, we are currently serving more than 45 countries all across the world. We take care of all your patenting needs, such as IDS management, patent proofreading, patent docketing etc. The price also we charge is minimal, and justifies the service we provide. Read more about us here.

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