WHEN DO I NEED TO RESPOND TO A PATENT OFFICE ACTION?

The response time for an office action for a Patent Application varies depending on circumstances, the minimum period of time is 30 days, the maximum period of time is six months after which time the application is declared abandoned.

35 U.S.C. 133 Time for prosecuting application [patent].

Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Director that such delay was unavoidable.


WHAT ARE OFFICE ACTIONS AND HOW TO RESPOND TO AN OFFICE ACTION FROM THE USPTO

Office Actions [Step 10 from the Process for Obtaining a Utility Patent]

The applicant is notified in writing of the examiner's decision by an Office “action” which is normally mailed to the attorney or agent of record. The reasons for any adverse action or any objection or requirement are stated in the Office action and such information or references are given as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of his/her application.

If the claimed invention is not directed to patentable subject matter, the claims will be rejected. If the examiner finds that the claimed invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected. It is not uncommon for some or all of the claims to be rejected on the first Office action by the examiner; relatively few applications are allowed as filed. (from http://www.uspto.gov/patents/basics.jsp#office)


Note: There is a difference between rejections and objections–MPEP 706.01 [Rejections] Contrasted With Objections. The refusal to grant claims because the subject matter [substance] as claimed is considered unpatentable is called a “rejection.” The term “rejected” must be applied to such claims in the examiner’s action. If the form of the claim (as distinguished from its substance) is improper, an “objection” is made.


HOW TO RESPOND TO PATENT OFFICE ACTIONS

37 CFR 1.111 Reply by applicant or patent owner to a non-final Office action.

(a) (1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.

(2) Supplemental replies.

 (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:

(A) Cancellation of a claim(s);

(B) Adoption of the examiner suggestion(s);

(C) Placement of the application in condition for allowance;

(D) Reply to an Office requirement made after the first reply was filed;

(E) Correction of informalities (e.g., typographical errors); or

(F) Simplification of issues for appeal.

(ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).

(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant's or patent owner's reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.

(c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.



Answering Office Actions

There are few canned answers on how to answer patent office actions because there are few typical rejections. The language in a patent application, amongst other things, is required to give adequate notice to potential infringers on what constitutes infringement (very fact specific).  General advice of answering office actions does not take actual applications and the prior art into account. A patent application is an application for legal rights and is Not Just a form.

The strategy for and implementation of a strategy for answering patent office actions depends on what type of refusals are given. Some choices of how to answer office actions include:

  • Rewrite claims to be definite and to distinctly claim the subject matter if the claims were rejected under 35 USC 112 including rewriting claims with proper antecedent basis and supplying essential structural cooperative relationships of elements if needed;
  • Arguing that the claims are not anticipated by prior art and are non-obvious by pointing out that the examiner’s position is not supported by prior art references.This cannot be done by making general statements but must be done by making specific arguments comparing the references and what they teach and comparing the claims to those specific teaching showing any way that the reference does not include or teaches away from the claims;
  • Amending claims to specifically define how the invention furthers the field beyond the prior art and arguing how these amendments are be supported in the specification; and
  • Canceling claims, narrowing claims or combining dependent claims with independent claims (where dependent claims are rewritten in independent form including all of the limitations of the base claim and any intervening claims).

See 37 CFR 1.121 Making Amendments for instructions on the procedural aspects of making patent amendments.


One useful tool for answering patent office actions are copies of previously issued patent applications in the same field and their complete prosecution histories (image file wrappers). This allows an applicant, agent, or attorney to see how others have succeeded in answering office actions, some with similar issues. Not Just Patents offers a patent search for the LAST FIVE or LAST TEN patents issued in a particular class that consists of the image file wrappers of patent applications in particular U.S. Classifications (see PatentSearchSteps.com for more information on U.S. Classifications). A potential applicant may use the LAST FIVE or LAST TEN to evaluate the level of  novelty and  non-obviousness that was required in recent years in order to receive a patent. A potential applicant may wish to “beef up” an invention or application after seeing that the last applications had better specifications to support claims. (Claims may require amending during prosecution that must be supported in the specification since no new matter may be written into an amended claim.) Alternatively, someone examining the LAST FIVE may find that a current application meets current standards and formats. Often patents that are issuing currently have been in prosecution for many years and have gone through many changes and often have been the subject of a continued examination and having a realistic expectation of what may happen with a current application may be helpful.


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