After the applicant has submitted patent application to the PTO, the examiner will begin the process of reviewing. After going through the patent application, the examiner presents his/her opinions about the patent application through office action. Thus, an office action is an official letter that contains opinion of the examiner regarding the patent application. It includes information whether any amendments are needed in patent’s scope or the structure of the patent application.
Related Article – Advantage of Filing Provisional Application
What are the Types of Office Action?
There are basically two types of Office Action. Let’s get to know about them below:
- Non-Final Office Action
- Final Office Action
Non-final office actions come at the initial stage of patent filing. They are necessarily the first office action issued by an examiner to the patent applicant. In this kind of an office action, the patent examiner states his/her opinion on the patentability of the claims that a patent application is having. Once the applicant receives such office actions they can either argue that the examiner is incorrect or can amend the claims.
Final office actions are those actions that come after non-final office actions. The examiner sends final office actions after reviewing the applicant’s response to the first non-final office action. Patent examiners can include the same rejections as those were provided in the first non-final office action. Or they can come up with some new rejections that they feel is worth amending. Government fees must be paid if the applicant decides to come up with some new amendments in their claims in case of final office action responses.
What are Office Action Response?
The significance of responding to office action can not be understated when it comes to patent. Upon receive the office action form the patent office, you must file a response in a way that convinces examiner to take your patent application to next step. On the other hand, if an applicant fails to overcome the objections raised by examiner, the applicant will not get patent grant. Thus, an applicant needs to meticulous while responding to the office action.
Differences Between Office Action Types
- When a final office action is issued by an examiner to an applicant, review of the claims on the merits of the claims is “closed” which is not the case when non-final office action is issued.
- The applicant can file Request for Continued Examination (RCE) to amend the claims after a final office action.
- A final office action requires paying an RCE fee in order to continue prosecuting the application before the examiner. In the case of non-final office actions, there is no extra fee.
- A Request for Continued Examination is a request letter that reopens prosecution.
- Between the non-final office action and the final office action, the applicant can have claim amendments entered as a matter of right.
- The applicant can enroll his/her application in the After Final Consideration Pilot (AFCP 2.0) Program to give the examiner additional production credit. In this, the examiner has to conduct a follow-up search and an interview with the applicant. Only after receiving the final rejection, the applicant becomes eligible to file this.
Office action Responses are thus an opportunity as well as a burden. It depends completely on how you interpret and respond. You can respond persuasively, and prudently to an office action to get its grant. However, not responding to office actions prudently could be detrimental to your overall goal. Simply put, office action responses prudently requires in-depth knowledge of the invention domain and a prolonged experience of the patent administration regime.
How We Can Help You?
Patent Drafting Catalyst can help you out in drafting Office Action Response to facilitate the process of patent grant. We have a team of experienced drafters who know how to draft responses to office action. We have served clients from around the globe when it comes to matters related to patent.
To know more about us or our services, you can get in touch with us.