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An Office Action (OA) is the document that is written by a patent examiner following a comprehensive examination of a patent application. Every patent application will undergo examination, and receive an office action. Understanding strategies on how to reply to an office action will undoubtedly save an inventor whether in New York City, Miami, Silicon Valley, or Cleveland, time and valuable budget. To understand office actions we must first dive into the typical patent process.
What are the typical steps of the patent process?
If you are a startup or an inventor with a new idea, filing a provisional patent application is normally the first step our team of licensed patent practitioners recommends.
You might ask yourself, why start the patent process with a provisional patent application?
The U.S. is a first inventor to file patent system. With that key point said, filing sooner rather than later to secure your place in line at the patent office is crucial to your business’ success. A provisional patent application is a low-cost patent application that is primarily used to obtain patent pending status at the USPTO and a filing date for the invention described within.
Provisional patent applications also provide 12 months of patent pending status where startups and inventors can utilize that time to explore the market opportunity, raise investment, or build your product. Since, provisional patent applications are not published nor examined, this gives stealth startups the ability to build under the radar!
After filing the provisional patent application, startups and inventors have 12 months to file a U.S. nonprovisional patent application, Patent Cooperation Treaty application, or both. As an example, if you have filed a provisional on July 4th,2026, then you will need to convert before July 4th, 2027. If you miss that deadline there is very little that one can do to recuperate the original filing date.
For the sake of simplicity, let’s say in the next step of the process, the inventors or startup elect to file a U.S. nonprovisional patent application. U.S. nonprovisional patent applications are also known as the “full patent”, or utility patent applications. Once the nonprovisional patent application is filed, it will be taken up for examination by the United States Patent and Trademark office by a trained examiner.
This is where all the work that went into the nonprovisional patent application and even the provisional patent application comes to light. The examiner of the USPTO will do a thorough review of your patent application. Every patent application whether it is for artificial intelligence, or a medical device will be examined.
What is an office action?
An office action comprises of a number of objections and rejections to the application’s specification, claims, and drawings. For software patent applications, the rejection may also be in regard to the application being abstractor in short, able to be done on pen and paper, or in the mind of a person.
To counter these rejections or objections, the applicant must create and file a response within the allotted time limit to avoid abandonment. Normally, the USPTO examiner provides a time period for which the response can be submitted without paying USPTO fees. The response to the office action must address all the objections and rejections and include all relevant reasons and modifications that address the objections and rejection. An experienced and licensed patent agent can help you craft the response with the intention of overcoming the rejections.
When drafting the office action response, you need to develop an effective plan to guarantee that the response is accepted, and the application is granted.
What are some key strategies to consider when replying to an office action?
When responding to a USPTO Office Action, the top strategies include carefully reviewing the office action, addressing all raised issues, filing a request for reconsideration if necessary, amending claims to address rejections, providing clear arguments and evidence to support your position, and if problems persist there are other options.
Key strategies to consider:
- Thorough analysis:
Carefully review the office action to fully understand the examiner's concerns and identify all cited rejections and objections.
- Claim amendments:
First modify your claims to address the examiner's objections by narrowing the scope or clarifying language where appropriate.
- Argumentation:
You have to provide detailed explanations and arguments supporting your amendments and any arguments to the examiner’s rejections that supports your positions in the amendment.
- Evidence submission:
If necessary you can provide additional evidence such as prior art that teaches away from you invention or the examiner’s rational for rejecting the claim, experimental data, or expert affidavits to support and strengthen your case.
- Request for reconsideration:
If you believe the examiner's decision is incorrect, request that the examiner re-evaluate the office action taking into account the new arguments or evidence presented in the response.
- Communication with examiner:
Maintain open communication with the examiner through phone calls or email to clarify issues and potentially reach a quicker resolution. We recommend always submitting an electronic communications authorization as this expedites the process.
- Seek the advice of a licensed patent agent:
For complex patent applications or challenging office actions, consult with a patent agent to navigate the process effectively. Patent agents are members of the bar at the USPTO and in most cases have years of technical experience which they can use to help you overcome the office action.
If all else fails the applicant has two options to move the application to allowance.
- Appeal to Patent Trial and Appeals Board:
If all other options are exhausted, consider appealing the examiner's decision to the Patent Trial and Appeals Board (PTAB).
- Consider a continuation application:
You can also file a continuation patent application or continuation in part to address issues raised in the office action while maintaining the original filing date for any invention disclosed in the original as filed application.
What happens after I submit my response to the office action?
Once the response to the office action on the merits of your invention is submitted, it will reviewed by the same examiner. If the examiner agrees with the arguments thenhe or she will issue a notice of allowance. If not, and you have already been mailed a nonfinal office action, then the examiner will issue a final office action.
What is the cost to respond to an office action?
Menlo Park Patents actively publishes our rates and packages for office action responses on our website and which can be found here.
Contact our team of licensed and experienced patent agents to help you overcome the rejections you received on your patent application!
