What is an Office Action?

The office action is a document written by a patent examiner in response to a patent application after the examiner has examined the application. An office action represents the government’s official position on the pending patent application, where an examining attorney sends an office action to notify an applicant about issues with his or her application. Usually, the patent agent or attorney responsible for handling the prosecution of a particular patent application receives the office action.

The Office action cites prior art and gives reasons why the examiner has allowed, or approved, the applicant’s claims, and/or rejected the claims. The office action may address almost any aspect of the application from its title to the length of abstract. The most important parts of the office action touch upon the basic questions related to the patentability of the pending claims.

In an office action, the examiner may question whether the specification provides sufficient disclosure for an ordinary person skilled in the art to understand and practice the invention as claimed. The examiner may also question whether the specification provides sufficient disclosure for a particular feature recited in the claims. These are broadly classified under “enablement” rejections.

The examiner will almost always have conducted a review of the prior art and will typically find prior art that arguably reads on the claims. If the examiner finds a single piece of prior art that reads on one of the claims, the examiner will reject the pending claim as having been “anticipated” by the prior art. If the examiner finds that a combination of references in the prior art together disclose the claimed invention and that a person of ordinary skill in the art would have been motivated to combine these references, the examiner will reject the pending claim as being “obvious” over the prior art. In some jurisdictions “obviousness” is known as “lack of inventive step.”

Such rejections often can be overcome by amending the claims and/or presenting arguments to the patent examiner, as will be discussed in related articles.

Most of the world’s patent office place time limits on the filing of responses to office actions. In some countries the applicant will have X months to respond to an office action without payment of an extension fee and Y months to respond to an office action with payment of an extension fee. In a typical office action in the US, for example, X represents three months and Y three months. In other countries the applicant may be allowed a single extension period throughout the entire time that the examination is being reviewed.

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