Office Action

What is an Office Action?

• An Office Action lays out the Examiner’s reasons for objecting to or rejecting your application.
• In some instances you may receive a Notice of Allowance indicating that all of your claims were allowed and will proceed to issuance with the payment of a fee.
• In other instances, the Office Action may indicate that some claims are allowable while others stand rejected.

What should I look for in the Office Action?

• Look for the Date Mailed
  • The deadline to respond to the office action is calculated from this mailing date. The Office Action will indicate a time period to respond without incurring governmental fees (generally between 1 month and 3 months). The application is considered abandoned if no response is filed by the established deadline, although extensions of time may be available.
• Restriction/Election
  • It is not uncommon for the Examiner to think that your application contains more than one invention. In that case, the Examiner will divide your application into different groups or species and force you to elect one of those groups or species.
  • You can argue against this type of restriction.
  • Alternatively, you can accept it and later file divisional application(s) for the remaining groups if you still want to pursue those claims while your application is pending.
• Objections
  • Generally, objections are made for problems with the form of the application rather than the substance of the invention.
• Rejections:
  • Generally, rejections are issued if the invention (as recited in the claims) does not meet the standards for patentability. In other words, the invention may not be directed towards patentable subject matter, the invention may not be novel, the invention may be obvious, or the written description may not be adequate enough to support the claims.