Maiorana Patent Law, PA

Patent Office Actions

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What is an Office Action?

Chris: An office action is the document the U.S. Patent Office (USPTO) mails to an applicant in a patent application file. Then the applicant files amendments or responses.

Is it unusual for the U.S. Patent Office to reject all of the claims?

Chris: Unfortunately, it's more the norm than an unusual circumstance. The Patent Office will sometimes allow some of claims in a first office action, but they tend to use the first office action as more of a fishing expedition and reject all of the claims. [1] This pushes it on the applicant to make some arguments in support of patentability.

Listen to the podcast.
Chris Maiorana interviewed by Steve Sleeper; recorded 2017.

What is the time period to respond to an office action?

Chris: Normally, an applicant gets three months to respond to an office action.

So why do you send the office action to your clients right away?

Chris: You would think there's no rush to get the office action out to the client, but that’s one of my business models as a Patent Attorney practicing in Grosse Pointe [2]. I want to get it out to them so at least they know that they have a deadline. They'll get a quick note saying, "A response is due by ... "; whatever the date is. Then they know.

How should the time be used?

Chris: When we first get an office action, we do some preliminary analysis of what the patent office examiner is saying and what we thought the claims were intended to cover in the first place. If we get that out to the client, we can have some talks with them to at least make sure they want to respond. Sometimes there are business factors that come into play we don’t know about. The client will say, "Just drop that one," or a small client may say, "I'm not even in the business anymore. I don't want to spend any more money." It's good to get the document out to them, let them know there's a business decision. If we want to move forward, then we can work out a strategy for a response.

Do you need input from the inventor to respond?

Chris: Sometimes we do, sometimes we don't. There's a lot of very technical and rule-based things the patent office will send out. We likely don't need input on that, and it's more confusing than anything to clients. But there are also items based on the patent references themselves, and those are the things we're looking for input on.

Are the claims of the references important?

Chris: A lot of times the U.S. Patent office will cite other U.S. patents. Then maybe a client will look at the claims and say, "They're only claiming this," or, "They're only claiming that." Unfortunately, that's not the standard for patentability. For patentability, the U.S. Patent Office can use anything in the specification, the drawings, or the claims as art against the client's claims. We need to address all that.

Is there a difference between an office action and a final office action?

Chris: Yes, there is. The first action that's mailed is sometimes called the non-final office action. That has the 90 days to respond we talked about. When responding to a non-final office action, you have the right to amend the claims and the patent office will have to enter those amendments into the file. If it's a final office action, which usually happens on the second mailing by the patent office, you don't have a right to amend the claims anymore. Then you're stuck with deciding whether to argue without an amendment, which potentially could lead to an appeal, or amending and ending up having to pay a fee for an RCE (Request for Continued Examination).

Is there a difference in strategies when responding?

Chris: There is. With the final action, you want to decide when drafting whether you need to amend the claims or not. If you do, then you might as well amend them significantly, or at least enough that you don't have to do a partial amendment in one response and then another amendment in another response. You're going to get stuck paying the RCE fee anyway, but if you don't amend the claims (in a response after final), then you are pretty much deciding at that point that you're going to move forward with an appeal (if the Examiner is not persuaded).

One other thing; there's a different standard between patentability and infringement. I dicuss that more here. For patentability, we need to show there's an element of the claims that's not found in the references. We mentioned that either in the figures, the specification, or the claim. But when we go back to infringement, we need to show a potential infringer has each of the elements that are in your claim. When we're drafting claims and trying to get them through the patent office, the key idea for a broad claim is to have fewer words. Fewer words is better in the claim so that you can ultimately enforce your patent.