The response to Office Action is the additional information you are asked to provide to the United States Patent and Trademark Office (USPTO) during the patent or trademark examination phase. This information is requested using a notification known as an Office Action. At least three Office Actions may be sent during the average patent examination period before the application is approved. In some cases, an Office Action is sent to reject a patent application. Failure to respond to an Office Action will result in a denial of your application and loss of your fees and potential patent rights.

Office Action Structure

  • The Office Action has a cover page that identifies the application in question by including the application number, filing date, inventor's name, attorney docket number, USPTO classification code, and date the notification was sent.
  • The first page summarizes the Office Action, noting the last response that was received and whether the action is final or not.
  • The next page includes claims objections, which are items in the patent claims that need to be addressed. This could include changing the wording, fixing errors, and/or including proper antecedents.
  • Cited art rejections, also called 35 USC 103 rejections, occur when the claims need additional information to distinguish the new invention from the prior art cited in the application.

Reasons for Office Actions

Office Actions are sent for both substantive and administrative issues with your application. Some of the most common reasons for an Office Action include:

  • Error or omission in the application, including technical or grammatical errors.
  • Unclear or insufficient information.
  • Inadequate or incomplete evidence.
  • The need for a legal argument to support your application.

Responding to a Trademark Office Action

Failure to respond to an Office Action properly by the stated deadline can result in rejection of your trademark or patent application. If you're not sure how your application needs to be modified, it's important to consult with a professional such as an intellectual property (IP) attorney. He or she can recommend strategies to improve your chances of approval.

You can respond to Office Actions electronically or by fax or postal mail. In most cases, a response is required within six months. However, you should start right away in case you need to do research or hire professionals to create a sufficient response. In addition, you will be charged additional fees if you respond after an initial three-month window. You will not receive a deadline reminder from the USPTO, and you will not receive an extension if you fail to meet the deadline.

Common Mistakes When Responding

Understanding potential pitfalls in crafting your Office Action response can ultimately increase your chances for approval. Some of the most common mistakes include:

  • Answering an Office Action too quickly, which does not allow sufficient time for research and crafting a thorough, adequate response.
  • Relying solely on the online response system rather than seeking clarification from the examining attorney directly if more guidance is needed. Since he or she will be reviewing the response, the recommendations this individual can provide are invaluable. In addition, the online system allows you to use only the most common responses to a specific issue and does not allow you to create your own response.
  • Failing to recognize the receipt of an Office Action as part of a legal proceeding. Every part of the application you submit and responses you send will be forever part of public record.

Final vs. Non-Final Office Actions

Office Actions that are not final indicate an issue with your application that needs to be addressed, giving you the opportunity to argue your case to the assigned examining attorney. A final Office Action indicates that your application is in the final phase of review and that if you do not respond properly, your application will be denied. For this reason, you may also want to file a notice of appeal at the same time as you respond to a final Office Action. This positions you to submit an appeal if your application is denied. Since appeals require specific and involved legal arguments, it's important to retain the services of an IP attorney.

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