Patent offices around the world have strict standards in the process of granting a patent. Scrutinizing patent applications very carefully throughout all stages is necessary. Stringent scrutiny is essential to ensure the patent is authentic.
Office action is one of the first hurdles that the inventor must overcome during the process of obtaining a patent. The examiner initiates this process even before accepting the patent application. Most of the inventors filing for patents will face office action. This article will wipe out the fears of patent applicants on office action and guide them on how to act when they receive one from the USPTO.
USPTO Office Action – An Overview
An office action is an official letter from the USPTO. An examiner issues it if the patent application is incomplete or does not meet the filing requirements. Accordingly, the person mentioned in the correspondence section of the Application Data Sheet of the patent application will receive the office action. It always requires a clearly explained and signed letter from the patent applicant as a response to office action to proceed further with the application.
Deadline for responding to Office Actions
In general, the replies to office actions should reach the USPTO within six months from the office action mailing date. However, one can check the accurate due date given on the second page of the letter. In most cases, based on the type of office action, the USPTO gives a shortened time frame (i.e.,, 2 – 3 months) to file a response. The office action denotes the duration as the ‘shortened statutory period’ in the letter. If the applicant fails to submit a response to the Office of Action within the stipulated duration, the USPTO abandons the patent application.
Ways to Respond to an Office Action
An elaborate written response
The inventor must submit an elaborate response in writing, supporting the patentability of the invention. Also, the written document should be precise and justify patent claims. In some instances, the examiner will issue an office action if the invention is not novel and obvious. In such scenarios, amending the claims in the application increases the chances of a successful submission. This amendment would narrow down the scope of the claims and give the examiner a reason to think about and process the patent.
Submit additional evidence
The inventor can submit additional evidence supporting the claims of the patent application. The evidence may include the results from experiments and the inefficiency of similar products that exist already. One can also include test data and statistics regarding the success of the invention in the market. In short, a piece of well-researched additional evidence may convince the examiner to proceed with the application.
Schedule interviews via phone calls
Often, a written document loses the tone and essence of the content. Hence, scheduling telephonic interviews with the examiner is a more practical approach. There are provisions to schedule an interview with the examiner in section 713 of the Manual of Patent Examining Procedure (MPEP). In general, the USPTO grants one interview to the applicant before finalizing the office action. Communicating over a call is usually very interactive and allows the inventor to convince the examiner regarding the patent application.
USPTO offers online Interview Request Air Form to schedule interviews with the examiner. However, it is essential to record all conversations of the video conference, telephonic calls, etc. in the form of a written statement to the examiner.
Mitigation measures for formality issues from an office action
In these issues, the examiner highlights the areas that do not comply with the format of the patent application. These issues are easy to solve with proper understanding. Let us have a glance at some examples of office action related to formalities.
Restricting claims: It arises when the applicant claims more than one invention in a single patent application. In such cases, it is advisable to restrict the application claim to one invention and proceed. However, if the examiner has wrongly categorized the invention, the applicant may request a different categorization.
Specification issues: Such issues arise when there are grammatical errors, unclear figures, missing descriptions, or incorrect labeling format. These issues are easy to rectify.
Substantive issues and mitigation measures
Office action on substantive issues often requires guidance from patent experts. Substantive issues include:
Double patenting: According to section 101 of 35 U.S.C., the examiner can issue rejection on the grounds of double patenting. Double patenting refers to a situation where the examiner finds that the claims of the patent are similar to an already existing patent by the same applicant. The inventor can file an e-terminal disclaimer. However, the USPTO issues a non-statutory double patenting rejection if the claims in the application and the existing patent are similar. The USPTO shall not accept two patents to exist with the same claims.
Lack of novelty: An examiner may reject an application if he finds evidence that the claims of the invention are not novel (section 102 of 35 U.S.C.). It occurs because the examiner may take the broadest possible interpretation while considering the application. In such cases, the inventor can narrow down and give more specific claims. However, the applicant should also ensure the claims are broad enough and are not possible to design around.
The obviousness of invention: The invention will be obvious if the claimed invention is a mere combination of two inventions. In such cases, the examiner may reject the application in grounds of obviousness of the invention (section 103 of 35 U.S.C.) One can refer to and quote the difference between the prior art and a claimed invention from section 2141.02 of MPEP as an argument.
Filing the Response
We usually file the responses to office action through the Electronic Filing System-web of the USPTO. One must ensure that they have responded to all concerns raised in the office action letter. Furthermore, the applicant should also justify the reasons to proceed with the application in the remarks section. Above all, one must always ensure that the response to an office action is clear and strongly supports the claims of the application.
A word to the Applicants
There is no need to panic when one receives an office action.
It is always wise to think about tackling and responding to it accurately. The initial scrutiny rejects a larger percentage of the granted patent applications. Nevertheless, patents are granted in most cases based on merits. It is always better to consider office action as an opportunity rather than an obstacle. It is a chance for the applicant to correct any mistakes and land on a precise patent application.
There are always patent experts whom you can turn to for guidance to respond to an office action.
