What is an Office Action?
An office action is a communication issued by the United States Patent and Trademark Office (USPTO) in relation to a patent application. It should be noted that at least one office action is generated in nearly every patent application.
Process | Prior Art Search and Substantive Review
A patent examiner drafts an office action after: 1) performing a prior art search in view of the claimed subject matter of the patent application; and 2) conducting a substantive review of the patent application for any deficiencies. The office action includes the Examiner’s findings regarding the aforementioned activities, and indicates any deficiencies (e.g., rejections/objections) or allowed/allowable subject matter.
Depending upon the present state of patent prosecution, the office action will have a designation of either “Non-final” or “Final.” If an Applicant does not receive at least one office action (i.e., a Notice of Allowance is received initially) in a patent application, many patent practitioners would argue that it is likely that the Applicant did not include a set of claims with varying claim breadth (e.g., broad, narrow, etc.); but instead, included only narrow claims. However, the foregoing statement is not necessarily “the rule” as many factors impact patent examination (e.g., state of the relevant prior art, claim interpretation, etc.).
Applicant Response | Timing and Substance
An Applicant receives a three month shortened period from the mailing date of the office action (extendable for an additional three months for a maximum statutory six month period upon payment of an appropriate extension of time fee) to respond to the office action. It must be noted that the Applicant is required to respond to EVERY objection/rejection contained therein to avoid having the response considered as non-responsive.
Telephonic Interview
If the outstanding Office Action has a designation of “Non-Final,” it is the belief of many patent practitioners (including this one) that a telephonic interview should be scheduled with the Examiner to discuss the Office Action prior to drafting an office action response. However, if the Office Action has a designation of “Final,” it is unlikely that an interview will be granted by the Examiner.