Clients:
After you've filed your application, you can expect, eventually, to receive an "Office Action from the USPTO patent examiner. This is an official communication from the USTP which will. n all likelihood, list some set of reasons for rejecting your patent application. This is a standard part of the procedure, and the next step is to respond to those objections and await potential future Office Actions.
Virtually all applications receive at least one Office Action, and so it is important to understand how to respond and how to read them. Knowing what you are reading gives you an advantage on what to do next and how to strategize your next move. For more information on the patenting process, see our Patent FAQ.
As the name suggest, it is the first page of your Office Action. On it, you will find the following sections:
In the second page of the Office Action, you will find the Office Summary form or PTOL-326.
Period for Reply
This is critical information: how long you have to answer to the Office Action. As stated in the law, you have 6 months to answer, except if the Examiner sets a shorter date, which they very frequently do. You must keep track of this date. If you do not file a reply within the given period, the application will be abandoned or you will have to pay an additional fee for an extension.
Note that you can extend this period by paying an extension fee with the reply. Check the USPTO fee schedule for more information.
Status
The examiner will use this section to communicate the status of your application. There are three componenets to this section:
Disposition of Claims
In this section, you will find a brief summary of the claims in the application and their current status. You may want to check and see at this point that all of the claims you believe you have pending are listed in at least one of the categories. Those categories are:
4. Pending– These are the claims that remain “alive" in the application.
4a. Withdrawn – These claims are “alive”. However, the Examiner is not reviewing them because of an earlier Restriction Requirement or Election of Species.
5. Allowed Claims – These claims have been cleared for patenting.
6. Rejected – Claim which the Examiner feels are not patentable for one reason or another.
7. Objected to – These claims are not patentable because of form or structure. This could be because the claims are dependent on a base claim that is rejected, but then, it would still be allowed if they were rewritten independently.8.
8. Subject to restriction or election – Restriction is when the Examiner has decided that there is more than one invention presented in the application. Election is when they have determined that there are more than one species of the invention. The Examiner will need you to choose one invention or species.
Application Papers
If the Examiner or the Official Draftsman has found a problem in some parts of the application, other than the claims, any of these boxes might be checked. You will ned to correct these problems when you reply to the Office Action.
Priority
Only relevant if you have claimed priority from an earlier filing. Make sure that the Examiner has recognized receiving your priority claim and has checked one or more of the boxes in this section.
Attachments
In this section, you will see lists of any additional papers in which should have been sent with this Office Action. If it has checked in any of the boxes in this section, you have to make sure that the item the Examiner checked is included in the package of material you received.
Acknowledgment of Earlier Filings or Response to Amendment
The Examiner will here indicate which of your earlier filings they are reacting to, if any, and whether or not any amendments have been accepted. Check to make sure that anything you have sent has been received. The Examiner may respond here to any arguments you made in an earlier filing, or they may do so in a Response to Arguments section at the end of the Action.
Objections
Your Examiner will typically suggest corrections and you will be expected to overcome the objection by making corrections amending the application in your response.
In this section, the Examiner may object to the specification, drawings or claims for several reasons. Objections will typically be set forth prior to any rejections of the claims. Generally, claim objections deal only with very evident errors such as duplicated or missing words, misspelling, incorrect punctuation and the like. More serious problems will be dealt with as rejections later.
Claim Rejections
There are various sections of the Patent Law which may result in an application being rejected. These include:
Deals with matters of wording and formality These rejections are usually quite simple to overcome. You may need to reorganize the way a claim is written or change some of the wording.
Some terms which often come up in Section 112 rejections:
Note that this rejection does not come up very often, except in computer or biotech applications. This rejection means that the Examiner thinks that the invention is either not one of the very broad classes of invention for which one can get a patent, or fits within one of the exceptions to patentability. Sections 101 states that:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."
This means either that the invention does not fall into one of the following categories:
Or it means that the invention falls under one of the following unpatentable categoriges:
A “lack of utility” or section 101 rejection arises in the following conditions:
The only way to overcome a Section 101 rejection is to demonstrate that your drug, cemical or DNA sequence have a reasonable utility.
The other case in which you will see Section 101 is for perpetual motion machines or anti-gravity devices. Simply put, the USPTO gets a lot of applications for these machines and no one has ever been able to describe realistically how one might work. These are the only cases in which the UPTO will ask for a working prototype.
A commn cause of rejection. If your aplication is met with a Section 102 rejection, it indicates that the examiner feels that your invention is already covered by an existing patent or known invention.
The only way overcome this rejection is to make an argument for why your invention is significantly different from those which have come before.This difference will need to be specified in the claim.
These rejections are based on the Examiner feeling that invention is something which would be obvious to an ordinary person with relevant knowledge and skills. This is the most difficult type of objection to overcome. The best strategy for overcoming this difficult rejection is to explain to the examiner how it is that your invention displays properties that are not obviously implied by what has come before. What is missing between common references and your invention? What is it that you have added to the field that would not have been evident to anyone else in the field?
A “Notice of Allowance” is issued when the Examiner accepts any claims. These claims will be issued in a patent.
The Examiner may also specify that some claims would be allowable if the claim supon which they depend were modified. You can then rewrite the claims to combine them with those claims upon which they depend, resulting in narrower claims than in the original application. Conversely, you coul do the opposite and modify the claims upon which the allowable claims depend.
Restriction Requirement
A Restriction Requirement indicates that the Examiner believes there is more than one invention in the application that are patentably distinct from each other. In other words, this is somehat the converse of Double Patenting where instead of filing a multiple patents for a single invention, the Examiner feels that you have submitted a singe application which covers multiple inventions. Again, this is a violation of the "one invention, one patent" rule.
The Patent Examiner will give a list of “groups” that represent the different inventions, explaining why they are distinct from each other. These groups may be defined by listing groups of claims, or by referring to figures in the drawing. You will have to select one invention to proceed with, and to withdraw claims directed to other inventions from the application.
Any claims which you have withdrawn from the application may be filed in a Divisional Applications. This involves re-filing the same application with just the claims that were withdrawn from the original application.
Election of Species
Election of species is similar to a restriction requirement, in that the Examiner will require that you limit the group of claims in the application. The difference is that in an Election of Species, the Examiner believes that the claims in the application cover more than one variation, or “species”, of a single invention. If the application includes a “generic” claim that covers more than one species which is allowed as a result of the examination process, then other unelected species which would be covered by that generic claim would also be allowed. However, if there is no generic claim, then you will need to file a “divisional” patent application covering non-elected species just as you would for a Restriction Requirement.
While the examiners may compromise on Election of Species or on Restriction Requirements if you offer compelling arguments, they will almost never withdraw them completely. It is posible to file a petition to have the requirement withdrawn, but these are very seldomly granted.
"Final" Rejections
We know how this sounds like. But don’t fret. Just because the Examiner has made the rejections “final” doesn’t mean they are final, concluding, lasting, or the ultimate rejection. The declaration of finality just limits your options in how you can respond to the rejections.
There are ways you can respond to a final rejection. They are:
The application will be considered abandoned if you do not pursue any of these responses. Now would be a good time to connect with our netork of patent attorneys!