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Understanding Office Actions

During the examination of utility patent or design patent applications, it’s common for the USPTO Examiner to object or reject the application “as written”. This results in an official communication known as an “Office Action”.

Responding to an Office Action

After a utility patent or design patent (non-provisional patent) application is filed, the patent undergoes examination by an Examining Attorney for the United States Patent and Trademark Office (USPTO). During review, the assigned Examiner may reject and/or object to the patent.When an Office Action is received, it’s crucial to review it and respond within the given deadline carefully. Neglecting to do so changes the patent application status from ‘patent-pending’ to ‘abandoned’.

When an Office Action is received, it should be carefully reviewed and responded to within the stated deadline. Failure to respond within the stated deadline will result in a status change of the patent application from ‘patent-pending’ to ‘abandonment’.


Understanding Office Action Deadlines

Office Actions usually present two different deadlines, a “soft deadline” and a “hard deadline”. The soft deadline is the date by which a response can be filed without incurring additional fees. The hard deadline is the final date a response can be accepted; failing to respond by this date results in the patent application being abandoned.

The first step in dealing with an Office Action is receiving and understanding it. The document will detail the USPTO’s concerns and objections regarding your patent application.

At APEX, our patent attorneys thoroughly review every Office Action for non-provisional patent applications filed by our clients. We explain the rejections and objections, and discuss the available options to overcome the refusal.

After reviewing the Office Action and consulting with the client, we formulate a response. This is a critical step, as it can make a difference in maintaining the ‘patent-pending’ status of the application.

FAQs about Office Actions

A Non-Final Office Action means the applicant can respond to the refusal set forth in the action and have the response reviewed by the Examiner. A Final Office Action, on the other hand, marks the refusal as “final”. However, the applicant can still file a “Request for Continued Examination” or a “Continuation in Part” with new matter to attempt overcoming the refusal.

If a patent application becomes abandoned due to a missed deadline in responding to an Office Action, fees will be required to petition the application out of abandonment.

The first deadline, the “soft deadline”, allows the applicant to file a response without any extra fees. The second, or the “hard deadline”, is the final date by which the Office Action must be responded to. Missing this deadline results in the abandonment of the patent application.

The response to an Office Action will address each rejection and objection, arguing against them with legal reasoning and evidence. It’s a crucial part of maintaining the ‘patent-pending’ status of your application.

At APEX, our skilled patent attorneys thoroughly review every Office Action for non-provisional patent applications filed by our clients. We ensure that every concern is addressed, enhancing your chances of overcoming refusals.

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