Office Action

The applicant is notified in writing of the examiner’s decision by an office “action” which is normally mailed to the attorney or agent of record.

The reasons for any adverse action or any objection or requirement are stated in the office action and such information or references are given as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of his/her application.

If the claimed invention is not directed to patentable subject matter, the claims will be rejected. If the examiner finds that the claimed invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected.

It is not uncommon for some or all of the claims to be rejected on the first office action by the examiner; relatively few applications are allowed as filed.

The first office action sets in motion a series of further steps, as described below, each of which require careful consideration. Beem Patent Law Firm is skilled and experienced in taking appropriate action at every step along the way.

Applicant’s Reply

The following discussion refers to requirements imposed by the Patent Office on the applicant, but as a practical matter, it is usually the applicant’s attorney who attends to the requirements, which, if substantive, often require consultation between the applicant and his or her attorney.

The applicant must request reconsideration in writing, and must distinctly and specifically point out the supposed errors in the examiner’s office action. The applicant must reply to every ground of objection and rejection in the prior office action.

The applicant’s reply must appear throughout to be a bona fide attempt to advance the case to final action or allowance. The mere allegation that the examiner has erred will not be received as a proper reason for such reconsideration.

In amending an application in reply to a rejection, the applicant must clearly point out why he/she thinks the amended claims are patentable in view of the state of the art disclosed by the prior references cited or the objections made. He/she must also show how the claims as amended avoid such references or objections.

After reply by the applicant, the application will be reconsidered, and the applicant will be notified as to the status of the claims, that is, whether the claims are rejected, or objected to, or whether the claims are allowed, in the same manner as after the first examination. The second office action usually will be made final.

Interviews with examiners may be arranged, but an interview does not remove the necessity of replying to patent office actions within the required time.

Final Rejection

On the second or later consideration, the rejection or other action may be made final. The applicant’s reply is then limited to appeal in the case of rejection of any claim and further amendment is restricted.

Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim. Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each claim so rejected and, if any claim stands allowed, compliance with any requirement or objection as to form. In making such final rejection, the examiner repeats or states all grounds of rejection then considered applicable to the claims in the application.

Amendments to Application

The applicant may amend the application as specified in the rules, or when and as specifically required by the examiner.

The specification, claims, and drawing must be amended and revised when required, to correct inaccuracies of description and definition or unnecessary words, and to provide substantial correspondence between the claims, the description, and the drawing. All amendments of the drawings or specification, and all additions thereto must not include new matter beyond the original disclosure. Matter not found in either, involving a departure from or an addition to the original disclosure, cannot be added to the application even if supported by a supplemental oath or declaration, and can be shown or claimed only in a separate application.

The patent attorneys of Beem Patent Law Firm are experienced in responding to office actions, conducting interviews, and making amendments when needed. Should you engage the Firm to represent you in connection with your patent application, in the event that claims are rejected, the Firm will inform you, request your comments and instructions, provide you with recommendations, and take appropriate action including preparing and filing a written response. Please contact the Firm for information on representation available to you for your patent matter.

Some of the information provided herein was obtained from the United States Patent and Trademark website, www.uspto.gov. For further information, see the Patent Office inventor resources at http://www.uspto.gov/web/offices/com/iip/index.htm.