Types of Office Actions

Although there are many kinds of Office Actions, the following two kinds are the most common.  It may be understood that the following discussion refers specifically to U.S. patent law and practice, however, many other jurisdictions use similar kinds of Office Actions.

  • Restriction Requirements:

After a patent application is filed, it is assigned to a patent examiner to be examined. Before the examiner examines the application to determine whether it satisfies all of the requirements for patentability, the examiner may review the claims to determine whether they encompass more than one invention and/or more than one embodiment.  Although the applicant is entitled to include claims covering as many inventions and embodiments in the application as he or she pleases initially, the examiner is entitled to restrict examination to a single invention or embodiment under certain circumstances. A true requirement for restriction (typically referred to as a “Restriction Requirement”) indicates the examiner’s opinion that the claims cover multiple independent or distinct inventions.

  • Final and Non-Final Office Actions:

An Office action may be “final” or “non-final”. In a non-final Office action, the applicant is entitled to reply and request reconsideration or further examination, with or without making an amendment. In a final Office action, the applicant has two options for reply. In the first option, the applicant may appeal rejection of claims to the Board of Patent Appeals and Interferences. Otherwise, the applicant may file an amendment which complies with the requirements set forth in the Office action. Reply to a final rejection must include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection must comply with any requirements or objections as to form. Yet another option available to the applicant is to file a Request for Continued Examination (RCE), which effectively re-opens the application for examination.  If the applicant files an RCE, the applicant may submit any claim amendments he or she pleases, without the limitations otherwise imposed on responses to Final Office Actions.

  • Advisory Actions:

When a patent agent submits a response to a Final Office Action without filing an RCE, and the examiner is still of the opinion that not all of the claims in the application are allowable, the examiner will issue another Office Action, known as an “Advisory Action.”  The applicant’s options for responding to an Advisory Action are limited to amending the claims to unambiguously conform with the requirements of the Final Office Action, filing an appeal, or filing an RCE.

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