Office action

In response to the first office action, the appHcant may file a series of amendments (step 6) and should provide substantial reasoning and analysis to explain the reasons that the pubHcation(s) cited by the examiner do(es) not disclose the invention as it has been claimed. The patent appHcant s response should also comply with the examiner s request for correcting formal problems in the appHcation. 

If the patent appHcation is allowed based on an appHcant s response to the second office action, examination is ended. However, if the patent examiner advises the patent appHcant that the rejections will be maintained and the appHcant views these rejections as insurmountable, the patent appHcant may choose to abandon the patent appHcation. If the patent examiner maintains the earHer posed rejections, and the patent appHcant disagrees with the examiner, the patent appHcant may appeal the examiner s decision to the Board of Patent Appeals and Interferences, which is comprised of adininistrative judges. The appeal process involves the noticing and briefing of the appeal, and oral argument before and a subsequent decision from the Board of Appeals and Interferences (step 10). Usually the oral argument is presented to, and subsequent decision is received from, a panel of three administrative judges selected from the full complement of the Board. If the Board panel decides in the appHcant s favor (step 11), the patent appHcation will be passed to issuance (step 12). If the Board decides in the examiner s favor, the patent appHcant will have to consider whether to refile the appHcation and request another round of examination or seek court review. 

The company s lawyer responded, The prerequisites for patentability are different from whether your claim is covered by somebody else s claim. Patentability with respect to the prior art requires novelty and nonobviousness. Their issued claim is part of the prior art, and so it will be considered only for whether it renders our claim not novel or obvious. In the last substantive office action we read why the patent examiner thought that the prior art patent claim did not negate the patentability of our claim and for what it s worth, I completely agreed with his reasoning ... 

Let s consider a hypothetical patent prosecution example representative of how applications flow through the patent process in the United States. In this hypothetical example, you will come to better appreciate the way in which an office action rejection by the USPTO is conveyed to the applicant as well as the way an applicant might attempt to amend the claim to overcome that rejection. 

Approximately 3 months later, the first office action arrived. Seeing the envelope from the USPTO, the patent attorney exclaimed, Man, I hope that s the patent ... 

Within 3 months (shockingly quick for the USPTO, they apparently have their own metrics), the patent attorney received office actions for all three of the cases on the exact same day (now there is a strange coincidence). 

After cajoling his reluctant administrative assistant into holding the office actions up for him, the patent attorney closed his eyes and selected one. Gleefully opening it and then reading it, his face slowly lit up with a big, beaming smile. The benzothiophene patent has been allowed ... 

Okay, let s see where the examiner went wrong, the attorney said, but I d better wait until after lunch, all of this hard work has made me hungry. Upon returning, the attorney unfolded the office action and began to read ... 

In the hypothetical just discussed, the applicant was allowed his claims in two out of the three cases in the first substantive office action. This is a little unusual in that very often at least some if not all of the claims in an application are rejected in the first office action. In this simple example, the applicants were trying to get single claims allowed, and the two cases containing compounds were not drawn to broad genera incorporating large numbers of compounds but, rather, were drawn to single species perhaps that is the reason for the facile allowances.38... 

Once the first office action is received, the applicant is given a limited amount of time to respond. The amount of time given to respond depends on the nature of the office action. For a restriction requirement, an applicant is normally given 1 month. However, the applicant can extend the response time all the way out to 6 months if he is willing to pay a fee that increases for each additional month that the reply is extended. When the office action is on the merits, the response time is normally 3 months, with the possibility of extending the response time out to 6 months, once again by paying an extension fee that increases for each additional month. Failure to respond to an office action in the maximum amount of time will result in the abandonment of the application.39... 

In the first office action by the USPTO, the examiner has cited several references ... 

The following is a quotation of 35 U.S.C. 103 (a) which forms die basis for all obviousness rejections set forth in this office action ... 

After reading the entire office action, the patent attorney leans back in his chair and breathes a heavy sigh of relief, Two claims out of four, that s 50%. That was a passing grade for me in law school and so I ll take it as a passing grade now. This calls for a celebration ... 

Another approach is to give primary responsibility for obtaining patents on university owned inventions to the corporate licensee. This should include the proviso that he will inform patent counsel for the licensor (university) of the issuance of all official actions, and also inform the counsel prior to making any substantive response to a patent office action or discontinuing prosecution or maintenance of any patent or application. Although this practice avoids the conflict of interest problem discussed above, it also involves a duplication of effort and expense. This may not be justified in many situations. 

Guaranteed adjustment basis (GAB)l Patent and Trademark Office failure to take certain actions within 14 months from filing date and four months from other events Patent and Trademark Office must mail an examination notification (first Office action including Quayle action or notice of allowability, restriction requirement and request for information, but NOT OIPE notice of incompleteness of application or other such notices) to applicant within 14 months of the filing date Patent and Trademark Office must also respond within four months to the applicant s reply to an office action or applicant s opening appeal brief Patent and Trademark Office must act within four months of a board of patent appeals and interferences (BPAI) or court decision, where allowable claims remain in the application Patent and Trademark Office must issue the patent within four months of date on which the issue fee is paid, and all outstanding requirements are satisfied. 

This second transitional provision is also not available if the PTO did not issued a restriction requirement before April 8, 1995 because of actions of the applicant. For example, if the applicant suspended examination or filed continuation applications and abandoned the parent applications, before the first office action, the Examiner would not have had an opportunity to issue a restriction requirement. In such cases, a restriction requirement would be appropriate and this transitional provision will not apply. 

Pending issuance of the patent, an applicant may maintain the information in the application as a trade secret. Until the patent issues, the Patent and Trademark Office keeps all information about the patent application secret. 35 U.S.C. 122. Applications are not available to the public or to other inventors. However, once the patent issues, the application and supporting documents, as well as Patent and Trademark Office action on the application, are filed in the Patent and Trademark Office search room. Such disclosure ends trade secret protection over the disclosed information. 

Patent Office actions and the court battle that followed lasted three decades, and produced volumes of testimony and scientific research. Indeed, the legal proceedings contained what may be the most complete scientific record of the discovery of a crystalline material. Over 1000 exhibits had been submitted and over 100 witnesses deposed in 18,000 pages of testimony by 1970. During the course of the 85-day trial conducted between 19 September 1977 and 17 May 1978, the district court received, in addition to the voluminous record compiled in the Patent Office, listed above, considerable new evidence including several thousand exhibits and the testimony of a number of experts in the area of physical and polymer chemistry. 

An examiner reviews filed patent applications to determine whether they meet the statutory requirements for patentability, that is, that the invention is novel and not obvious over the prior art, and the description of the invention in the patent application provides an enabling disclosure, a written description of the invention, and the best mode of carrying out the invention as of the date the application is filed. As part of the examination, the examiner conducts a prior art search, and may rely on identified prior art to support a ground of rejection of the patent application. Through the process of issuing examination reports, Office Actions, and the applicant s responses to them, an official record is created of the... 

U.S. Prosecution - first office action from USPTO, generating inventor s responses and amendments to the... 

Once the application has been received by the Patent Office, it is assigned to a patent examiner, who determines if the application and the claims satisfy the statutory requirements for a patent. To be patentable, an invention must be new, must be useful, and must not be obvious to an individual familiar with the area of technology to which the invention pertains. The examiner conducts a search of the relevant literature and renders an opinion, known as an Office Action, as to whether the invention satisfies these requirements. If the examiner finds that the application and the claims that define the invention satisfy the statutory requirements, the application is allowed. The applicant pays an issue fee and the patent is granted. 

However, patent examiners almost invariably reject the application in the initial Office Action. This typically starts a dialog between the examiner and the applicant. The applicant can amend the claims, argue the rejection, and/or present additional evidence as to why the invention is patentable. If no agreement is reached, the applicant can appeal the examiner s action, first to an appeal board within the Patent Office, and eventually to the courts. 

After the application is filed, it may be a year or more before the iiutial Office Action. The applicant may take up to six months to respond to each Office action, and the examiner may take several months to respond to each of the applicant s responses. Therefore, it is typically two to four years between the filing date of an application and the issue date of the patent. 

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