The USPTO (the United States Patent and Trademark Office) has just sent you an office action. Don’t panic. Once you figure out just what an office action actually is, you can respond accordingly. Read on to learn all about office actions should you receive one and how to respond.
What is a Patent Office Action?
First things first, what exactly is an office action? An office action is issued by a patent examiner. It is a written correspondence from the patent examiner to you that requires your signed response in order for your application to move forward. The requirements in your office action must be met by you in a swift and timely manner.
Types of Official Letters in the Patent Game
There are several types of office actions including restriction requirements, non-final Office Actions, and final Office actions. In addition to office actions, there are other types of official letters you may receive, such as a notice of allowance and a notice of allowability. A notice of allowability is when the patent examiner determines that all the pending claims in your patent application are eligible to receive a patent. The letter will be accompanied by a Notice of Allowance fee which must be paid before the patent can be issued. Another type of official letter is a notice of unacceptable oath or declaration or problems with the drawings. When such a notice is sent to identify one or more problems in the patent application or the applicants (your) correspondence you can usually respond without too much problem. This type of notice usually has a two-month window to respond or the application might be held abandoned if the problems are not resolved in that time. So, don’t delay!
What Are the Deadlines for Patent, Office Actions?
Most office actions must be answered in 3 months. If they are not answered in that time frame extension fees will likely be required. There are no extensions beyond a 6-month time frame unless otherwise stated. If an applicant does not reply in a timely manner the application will be marked as abandoned.
How Should I Respond to an Office Action on my Patent?
There are several ways to respond to an office action. You can reply online via the USPTO’s Electronic Filing System. You can also respond to an office action by fax, mail or by delivery to the USPTO’s Customer Service Window in Alexandria, Virginia. Yet, something tells me the latter is the least popular option when responding to office actions. Ultimately, how you respond is up to you.
The patent application process can be arduous. You’ve already done the hard part, creating the invention. You’ve gathered all the artwork, performed a thorough patent search, and scraped together the funds to properly apply for a patent and hire a patent attorney if need be. Should you get an office action from the USPTO, don’t freak out, just remember to act swiftly and carefully read the instructions. Failure to do so may result in USPTO’s abandonment of your application. Don’t let a simple mistake be your undoing.
Due to the difficulty in responding to an Office Action, it is best handled by a Patent Attorney. Don’t let your invention be compromised at this stage by trying to handle it by yourself
Contact your Patent Attorney to learn more.
Post Date: March 6, 2019
