How To Respond To Patent Office Action

What does it take to respond to a Patent Office Action?

Since the probability is high (approximately 88%) that a utility nonprovisional patent application will be rejected at least once, the issue is not if, but when and how you will need to respond to a patent 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 the deadline for a Patent Office Action response?

The cover page of a patent Office Action contains two important pieces of information:

  1. the specific details of the particular patent application, including the application number, filing date, first named inventor, etc.; and
  2. the Notification Date which triggers the response deadline.

Patent Office Action deadlines are extendable. Let’s take a look at the extension-free and extended due dates.

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.

How to Read A Patent 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:

Nonfinal vs. Final Office

The summary will indicate whether the Office Action is nonfinal 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.

Allowable Claims?

Any allowed claims will be identified. This is fairly straightforward.

Objected Claims

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

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.

How to Respond to Prior Art Claim Rejections

Claims rejected for not being patentable over the prior art will typically fall under Section 102 or 103. With a Section 102 rejection, the examiner believes all the claim elements can be found in single reference. This is known as the anticipation rejection.

Responding to a Section 102 anticipation rejection is more straightforward because you can 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.

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. Known as an obviousness rejection, the examiner is combining multiple prior art references to reject your claims.

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.

Conduct an Examiner Interview before you respond to a Patent Office Action

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.

Need help to respond to a Patent Office Action?

Call (949) 223-9623 or email patent attorney Vic Lin to see how we can help you draft an effective response to your patent Office Action.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
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2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
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Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
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Genevieve Springer
2022-09-09
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InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
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2022-03-05
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Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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