Patent Office Actions
An “Office Action” is a letter from a patent office in which a patent examiner or other official of the patent office makes an official communication to the patent applicant about the status of the patent application.
Office Actions, and the rejections that they contain, are a normal part of the patent application process. The receipt of an Office Action rejecting a patent application does not necessarily imply that the patent application will not be granted as a patent. Many patent applications are rejected several times before being granted. In fact, over 95% of patent applications in the U.S. are rejected in their entirety in the first Office Action. Such rejections often can be overcome by amending the claims and/or presenting arguments to the patent examiner.
Most Office Actions are written by a patent examiner after examining a patent application, for the purpose of expressing the examiner’s opinion regarding whether some or all of the claims in the patent application are allowable (i.e., patentable). If the Office Action indicates that some or all of the claims are not allowable, then the applicant has an opportunity to respond to the Office Action, such as by arguing that the examiner is incorrect and/or by amending the claims in an attempt to overcome the examiner’s rejections.
Although there are many kinds of Office Actions, the following four kinds are the most common. Although the following discussion refers specifically to U.S. patent law and practice, many other jurisdictions use similar kinds of Office Actions.
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. One way for the applicant to respond to a Restriction Requirement is to select (“elect”) the claims directed to one of the inventions, and to remove (cancel) the remaining claims from the patent application. The canceled claims may be pursued by filing a separate application, known as a “divisional” application, which contains the same specification as the original application and the claims that were canceled in the original application. The divisional application may be filed immediately or at any time while the original application is pending (not abandoned or issued as a patent).
Another way to respond to a Restriction Requirement is to argue that the inventions specified by the examiner are not independent or distinct. The terms “independent” and “distinct” have particular legal meanings that must be taken into account when making such a response.
A Requirement for Election of Species is another kind of Office Action that is often referred to as a kind of Restriction Requirement. A Requirement for Election of Species indicates the examiner’s opinion that the claims cover multiple embodiments disclosed in the patent specification. A response to an election of species must elect one of those embodiments (species) for examination on the merits. The remaining claims, however, do not need to be permanently removed from the patent application. Instead, they may be “withdrawn” and thereby lay dormant unless and until a generic claim is held allowable. If such a generic claim is held allowable, then any withdrawn claims that are species of the genus claimed by the generic claim may be rejoined into the application and held to be allowable as well.
Non-Final Office Actions
The patent examiner assigned to a patent application examines that application to form an opinion about whether the application satisfies all of the requirements for patentability, such as novelty, nonobviousness, and utility. The examiner also forms an opinion about whether the application satisfies the formal requirements established by the Patent Office. The examiner then states his opinions and explains the reasons for them in an Office Action. The first such Office Action is referred to as a “Non-Final Office Action.” The term “Non-Final” may be confusing at first glance, but makes sense when considered in contrast to “Final Office Actions,” which are described below.
A Non-Final Office Action always contains a rejection of or objection to some part of the patent application. The vast majority of patent applications are rejected, in whole or in part, in the first Non-Final Office Action mailed by the examiner to the applicant. For better or worse, this is a normal part of the process and does not necessarily indicate that the patent application will not be granted as a patent. Often, rejections in an Office Action reflect a misunderstanding by the examiner of the invention claimed in the patent application or a misunderstanding of the relationship between the invention and the prior art.
The applicant has an opportunity to respond to a Non-Final Office Action by doing one or both of the following: (1) arguing that the examiner is incorrect; and (2) amending the claims and/or specification of the application to overcome the examiner’s rejections. The applicant may also speak with the examiner on the telephone or meet with the examiner in person in an attempt to reach an understanding and obtain allowance of the patent application.
Whether or not the applicant confers with the examiner about a Non-Final Office Action, the applicant must always submit a response to the Non-Final Office Action in writing. The examiner reviews the response and then either issues a Notice of Allowance, indicating that the examiner has found all claims in the application to be patentable, or issues a Final Office Action, in which the examiner once again rejects some or all of the claims.
Final Office Actions
A Final Office Action is most easily understood simply as a second Office Action, sent by the examiner after receiving the applicant’s response to a Non-Final Office Action, if the examiner is not convinced by the applicant’s arguments and/or amendments to the application. Although specific rules govern the circumstances under which the examiner can label a second Office Action a “Final” Office Action, it is not essential to understand those rules to obtain a basic understanding of the differences between Non-Final and Final Office Actions.
The primary practical difference between a Non-Final Office Action and a Final Office Action is that the applicant has a more limited range of options for responding to a Final Office Action than to a Non-Final Office Action. For example, the only claim amendments that the applicant is allowed to make in response to a Final Office Action are those which would clearly make the application allowable as indicated by the Final Office Action. In practice this means that the applicant may only make claim amendments that the Final Office Action suggests will be allowable.
Another option available to the applicant, if some or all of the claims have been rejected twice (e.g., once in the Non-Final Office Action and once in the Final Office Action) is to file an appeal with the Board of Appeals and Patent Interferences (BPAI), in which case the BPAI will decide whether the examiner or the applicant is correct about the patentability of the claims.
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. The primary tradeoffs associated with filing an RCE are that the Patent Office charges an additional fee for filing an RCE, and that it may take longer to receive a response from the examiner than if the applicant had submitted a response directly to the Final Office Action.
The ability of the applicant to continue examination of the application by filing an RCE means that a “Final” Office Action is not truly final. It is common, for example, for applicants to receive a Final Office Action, to file an RCE with a response to the Final Office Action, and then to receive another Non-Final Office Action from the examiner. If the applicant responds to this second Non-Final Office Action (the third Office Action in total since the beginning of examination) and the examiner still does not consider all of the claims to be patentable, the examiner may issue yet another Final Office Action, in response to which the applicant may file another RCE. Although filing a large number of responses to a large number of Office Actions over an extended period of time is not necessarily desirable, it may be the most appropriate strategy in some circumstances.
If a patent applicant submits a response to a Final Office Action without filing an RCE (see above), 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 (see above). It is best to speak with the examiner before filing amendments in response to an Advisory Action, to ensure that the examiner will accept those amendments. Otherwise, the applicant risks having the application become abandoned.
Evaluating and responding to various types of Office Actions is a normal part of the process of obtaining a patent. Responding to an Office Action requires understanding not only the content of the Office Action but also the rules that apply to different kinds of Office Actions. Although this document is intended to provide a general overview of the most common kinds of Office Actions, it cannot substitute for the counsel of a competent patent attorney. Should you have any questions, please feel free to contact us directly.