Examination and Office Actions
Examination and Office Actions
When your application is finally examined, the USPTO will issue an “Office Action” which sets forth the examiner’s opinion of the patentability of the invention, describes any rejections of the drawings submitted, and points out any questions he/she has with the words and phrases used in the application. Under the recent KSR case, it is not uncommon for all claims to be rejected in a first Office Action.
When we get the Office Action, we will give it a brief review, and send a copy to the client. We ask that the client contact us immediately to review the contents of the office action and agree on an appropriate course of action.
There are three main ways we usually respond to Office Actions. First, the traditional method is to prepare a written response in which we bring up arguments why we believe the invention is patentable over the examiner’s rejections, and amend the claims to try to work the application around the prior art cited by the examiner in the Office Action. Second, we can call the examiner by telephone and try to argue the case over the phone. Third, we can request a meeting with the examiner at the USPTO headquarters in Alexandria, Virginia.
While the third option is usually the most expensive, we have found that in many cases it offers the best chance of getting a patent allowed. With visiting the USPTO headquarters, the inventor can also come along and bring up his or her points why the invention should be patentable.