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 application “as written”. This is a typical occurrence during examination. When this occurs, the USPTO will issue what is known as an “Office Action”. Office Actions are official communications from the USPTO concerning an inventor’s patent application.
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’.
A patent attorney for APEX carefully reviews every Office Action we receive on non-provisional patent applications we file for our clients. As part of this review process, we provide our clients with an explanation of the rejection(s), objections, and options available to our client to overcome the refusal. Our fees for responding to Office Actions vary since each and every Office Action is different.
Commonly Asked Questions about Office Actions:
What’s the difference between a Non-Final Office Action and a Final Office Action?
Basically, a Non-Final Action means that the applicant is entitled to respond to the refusal set forth in the Office Action and have the response be reviewed by the Examiner. A Final Office Action means that the refusal is “final”.
Note: If an applicant receives a Final Office Action, the applicant can file a “Request for Continued Examination” or file a “Continuation in Part” with new matter added in an attempt to overcome the refusal.
Why is there more than one deadline shown on an Office Action?
Sometimes Office Actions show two different deadlines. The first deadline, which can be considered a “soft deadline”, is the date that the applicant is able to file a response without having to pay any additional fees.
The second deadline, or a “hard deadline”, is the final date the Office Action can be responded to. Failure to respond before the hard deadline results in Abandonment of the patent application.
What happens if a patent application becomes Abandoned?
If a patent application becomes abandoned, the client must pay fees and petition to get the application out of abandonment.