Patent Office Action: What Is It and How Do I Respond?

What is an office action?

An office action is a formal response to your patent application from the patent office. An office action can require different kinds of responses from the inventor. For example, an office action can object to the way a drawing is submitted or object to the formatting of your patent application. An office action can also reject your patent on the grounds of novelty, obviousness, and/or subject matter eligibility.

U.S. patents require absolute novelty: no one can ever have invented, published, or presented your invention before you. Knowing how to make sure you have absolute novelty starts before you even file a provisional patent application: with a good patent search. It can be helpful to know what other inventors, engineers, and companies have said in the field of your invention in comparison to what others have done. Although not required, a patent search can help an inventor identify similar patents and publications to their invention. A patent search can potentially save an inventor thousands of dollars if the search reveals identical or nearly identical documents to their invention. The patent search can also help an inventor modify an invention to differentiate it from other inventions in the same field.

In addition to an invention requiring novelty to be granted a patent, the invention must also be nonobvious when compared to prior inventions. Nonobviousness is a term in patent law describing something that is not readily apparent. If someone of ordinary skill in a relevant field could easily make the invention, then it is considered obvious and would be an invention based on prior art.

For example, you are changing your millionth diaper and regretting your decision to use cloth diapers. The covers that you put over the cloth diapers always leak around your son’s legs. All the plastic pants you snap over the cloth diapers aren’t flexible around his legs. Inspired, you sketch a design that will extend further down the babies’ legs and cover the thick cloth diaper—it can’t fail. You search online and find that no cloth diaper covers use such a design.

When you file your patent, you must include an information disclosure statement (IDS) with references to all of the plastic diaper covers that you found. They tell the story of your invention: no one thought to extend the diaper cover to cover leaks. It will help the examiner understand what makes your invention novel. The examiner will then conduct his or her own search. If you have already shown the examiner results that you think are relevant, it will help them avoid a search that comes up with irrelevant results.

But imagine that two years after you file your patent, you get the first office action. The examiner rejected all your claims because they found a catalog that showed a disposable diaper with extended legs. The office action will explain the basis in law for the patent rejection, it will cite the patent or publication that proves your invention is not novel, and make the argument why it is too similar to your invention.

Office action response

Do not take it personally. The examiner is not rejecting your invention—just the way you claim it. At the end of every patent is a numbered list of sentences that describe what part of the invention you claim is yours. A claim is the most valuable part of the patent. It is the part of the patent that infringers infringe. It is exactly what the inventor owns. Patent claims are exactly what the inventor can enforce against others.

The patent process is a negotiation. Most lawyers file a first set of claims that is broader than the inventor needs. The examiner will almost always reject the first set of claims and then work with the inventor to find a middle ground. Just like you do not pay sticker price for a car, you should never file a patent with the final set of claims. You have to negotiate, and your office action response is the continuation of a strategy you started when you filed your patent.

In the case of your diaper invention, you read through your original claims and realize that you did not specify that the invention was for cloth diaper covers. Your claim is for a diaper with extended wings covering the legs. The examiner makes a point that disposable diapers had already made a similar invention. Maybe you can get around the office action if you limit your claims to cloth diapers. There is a really good way to find out.

Examiners leave their contact information in the office action. Email the examiner and ask to schedule an interview. Interviews allow inventors, or their attorney, to ask the examiner questions. The patent office is very, very busy, so plan on scheduling the interview a few weeks in the future. At the interview, ask the examiner questions. Avoid the urge to lecture or to complain. You want to find out what the examiner is thinking and the rationale for the office action. Maybe she has made a genuine mistake, or you failed to convey some critical point of your invention. 

Interviews are also great opportunities to test and see if the examiner is willing to compromise. You ask the examiner if you can get around the diaper rejection if you limit your claims to cloth diapers. The examiner may agree if you limit the claims to cloth diaper covers made from water-resistant materials. You can get to work drafting your office action response and a revised set of claims.

It is the duty of the United States Patent Office to ensure that every design patent, utility patent, and any other intellectual property given in the name of your government is worthy of an issued patent. Every inventor has to work to get those rights, so start early: Know what makes your patent novel, file the patent, and list the references you find, and work with the examiner to get the claims you need that the patent office can accept.

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