An Office Action is a document issued by the United States Patent and Trademark Office (USPTO) that explains the reasons for objections or approval of a patent application. If the USPTO is not ready to approve a patent application, the office action explains the reasons for the patent examiner’s rejection. If the USPTO is ready to approve a patent application, the office action explains the reasons for the patent examiner’s approval.
After applying for a patent, a patent examiner at the United States Patent and Trademark Office reviews the patent application to understand how the invention for which a patent is applied for works. Then, the USPTO patent examiner searches for already existing similar inventions which are known as prior art. If the patent examiner is of the opinion that the invention for which a patent is applied is novel, nonobvious, and useful when compared to existing inventions, the examiner will issue a notice of allowance which indicates that the patent application meets the requirements for a patent. However, if the patent examiner is of the opinion that the invention for which a patent is applied is not novel, nonobvious, and useful, or does not meet any of the other requirements to be awarded a patent, the patent examiner will issue an office action explaining the reasons for rejection, and further inviting the patent applicant to respond.
Grounds for Rejection at the USPTO
When patent examiners at the United States Patent and Trademark Office (USPTO) send an office action, they will explain the reasons for the rejection and cite the grounds for rejection. Here are the common grounds for rejection of a patent application which will be indicated in a patent office action:
35 U.S.C. § 101 – Patentable Subject Matter: This section of patent law addresses whether the invention falls within categories of inventions that are eligible for a patent. Not all types of inventions are eligible for a patent. Only a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent.”
35 U.S.C. § 112 – Specification and Disclosure: This section of patent law addresses the requirement for a clear and comprehensive explanation of how the invention works. It determines whether the patent applicant’s description adequately explains the invention, ensuring that others in the industry can understand how to make and use the invention.
35 U.S.C. § 102 – Novelty: This section of patent law evaluates the novelty of the invention. A patent application can be rejected under this section of patent law if the invention for which a patent is applied is not novel. A patent applicant must demonstrate that they were the first to invent the invention and that it has not been anticipated by existing inventions.
35 U.S.C. § 103 – Non-Obviousness: This section of patent law assesses whether the invention is non-obvious to a person of ordinary skill in the relevant field. An invention is considered obvious if a skilled person, using their knowledge and skills at the time of the patent application, could have easily developed the claimed invention based on prior art (existing inventions). If it appears that a skilled individual would have been motivated to create the invention, the invention may be deemed obvious and rejected for a patent under this section of patent law.
Responding to an Office Action
Most patent applications receive one or more office actions before receiving a notice of allowance and many patent applications never receive a notice of allowance even after multiple office actions. An applicant for a patent must convince the USPTO that the invention for which a patent is applied meets the requirements for a patent. Whether an invention meets the requirement for a patent is subjective. You may think that your invention is non-obvious when compared to existing inventions, but the patent examiner assigned to review your patent application may think your invention is obvious when compared to existing inventions.
When you receive an office action, you must prepare a written response to the USPTO before the due date to respond, rebutting the arguments made by the USPTO. If you do not respond to the USPTO before the due date to respond, your patent application will become abandoned, possibly permanently. In your response to the USPTO’s office action, you need to address each of the patent examiner’s objections. You may need to point out the differences between your invention and the existing inventions found by the patent examiner. You may need to ask for a weaker patent. Work with your patent attorney or patent agent who has experience in preparing the arguments and amendments to your patent application to best convince the patent examiner to approve your patent application.
