What are Office Actions?

The term “Office Action” can encompass a wide range of official letters regarding your patent application. When these letters come, they are subject to very strict regulations regarding response times and the number and way questions from an examiner may be addressed. Responding to office actions  properly can mean the difference between an allowed or disallowed patent. They can be scary and confusing. Van Dyke Intellectual Property Law is here to help.

Whether you are trying to understand the process better, or do this on your own, here is some information from the USPTO to guide you.

Responding to Office Actions

A USPTO patent examiner may issue several different types of official letters about your application. Below is a description of each type and information on how to respond. It is very important to carefully read the USPTO correspondence to understand what type of response is needed and the time period for filing one.

Types of Official Letters:
  • Office Action

An Office action is written correspondence from the patent examiner that requires a properly signed written response from the applicant in order for prosecution of the application to continue. Moreover, the reply must be responsive to each ground of rejection and objection made by the examiner. Examples of Office actions include a restriction requirement, a non-final Office action, and a final Office action.

  • Notice of Allowability

If the patent examiner determines that all of the pending claims in the patent application are allowable (e.g., eligible to receive a patent), then a Notice of Allowability (USPTO Form PTOL-37) will be mailed. The Notice of Allowability will identify the allowable claims and will be accompanied by a Notice of Allowance and Fee(s) Due (USPTO Form PTOL-85) identifying what fee(s) must be timely paid before issuance of the patent application as a U.S. Patent.

  • Notice

Another type of notice may be mailed by the examiner to identify one or more deficiencies in the patent application or in applicant’s correspondence. A notice usually sets a two-month time period to correct the deficiency unless it accompanies an Office action. An example of a notice is a Notice of Non-Compliant Amendment(37 CFR 1.121).

Response Deadlines

Most replies to Office actions (official letters) must be received within 6 months from the mailing date on the Office action. Office actions in almost all instances set a shortened period within which a response can be filed without having to pay extension of time fees. The shortened period is typically either two or three months, depending on the type of Office action. In certain circumstances, the Office action will specify a different response period. There are no extensions beyond the 6-month statutory time period for reply other than notices that do not have a statutory time period for reply. If an applicant does not submit an acceptable timely response to an Office action, the application will be held abandoned.

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