Responding to a Patent Office Action
Since the probability is high that a utility non-provisional patent application will be rejected at least once, you should expect to receive an Office Action. If and when that Office Action is issued, don’t be surprised or disappointed. Recognize that it’s a normal part of the patenting process and formulate a strategy with your patent practitioner to deal with it.
When is a response due?
The cover page of a patent Office Action contains two important pieces of information:
- the specific details of the particular patent application, including the application number, filing date, first named inventor, etc.; and
- the Notification Date which triggers the response deadline.
Extension-free vs. extended deadlines
The extension-free deadline for responding to a substantive patent Office Action (excluding Restriction Requirement) is three months from the Notification Date. If the 3-month date falls on a weekend or holiday, the extension-free deadline is pushed to the following business day.
Patent response deadlines may be extended on a monthly basis for up to three additional months. There is no need to pay the USPTO extension fee in advance because the the extension fee is paid concurrently with the filing of the response and applied retroactively.
For example, suppose an Office Action was issued on Feb. 1, 2018. The extension free-deadline would be May 1, 2018. If you do not file a response by May 1st, you don’t have to request an extension before entering the 1-month extended period. Instead, you would calendar June 1st as the 1-month extended deadline and pay 1-month extension fee concurrently with your response if you file by June 1st. If not, then docket July 1st as your two-month extended deadline and so on. At the very latest, you would have a 3-month extended deadline of Aug. 1st to file a response with the payment of a 3-month extension fee.
What to look for in the Office Action Summary
Located behind the cover page, the Office Action Summary is typically page 2 of the PDF file. This OA Summary contains some helpful information, including:
Non-final vs. Final Office
The summary will indicate whether the Office Action is non-final or final. Incidentally, this post primarily addresses how to respond to a substantive non-final Office Action, though many of these observations may also be applicable to a Final Office Action.
Any allowed claims will be identified. This is fairly straightforward.
It is possible that you may have allowable subject matter currently recited in objected claims. To see if any subject matter is allowable, you will need to delve further into the Office Action. Minor claim objections are easier and less expensive to resolve. Such objections typically relate to claim language being “indefinite” under 35 USC 112(b). In most cases, these objections may be resolved by cleaning up the claim language.
For example, if antecedent basis is improper, the fix may be simply replacing “the” with “a” or “an,” or vice-versa.
Rejected claims will be identified. In most cases, claim rejections will be based on prior art. If the claims cover software or any business methods, the examiner may also issue a Section 101 rejection on the grounds that claimed subject matter is ineligible for patent protection.
Responding to Prior Art Claim Rejections
Claims rejected for not being patentable over the prior art will fall under Section 102 or 103. With a Section 102 rejection, the examiner believes all the claim elements can be found in single reference. With a Section 103 rejection, certain claim elements are found in at least one reference while the remaining elements can be found in secondary references or be considered an obvious design choice.
Responding to a Section 102 anticipation rejection is more straightforward because you can simply point to one or more claim features that are not found in the cited 102 prior art reference. These arguments can be made in conjunction with amendments that add such claim features to the rejected claim.
Prevailing over a Section 103 obviousness rejection can be trickier. You can point to certain claim features not shown or suggested in the cited combination and/or argue how it would not be obvious to combine the prior art references.
Though I’m a big fan of talking to patent examiners, not every Office Action deserves an Examiner Interview especially when the action is non-final. However, an interview may be warranted even in response to a non-final Office Action if it appears that the examiner doesn’t quite understand the claimed invention.