Understanding Patent Office Actions

Stage One is a Simple Paperwork Review

After the patent application is filed, the US Patent and Trademark Office (USPTO) reviews the application to confirm that the paperwork rules have been followed (fees paid, all pages included, and correct forms filed). You can read this article on The Patent Process for an explanation of the full process for getting a patent. It is uncommon to get a rejection of the initial application based on something missing or incorrect in the filing paperwork, but not unheard of. However, if it happens, it is also generally easy to correct. We find that most of the rejections at this stage of the process relate to drawings quality and require that replacement drawings be submitted to fix the problem. This initial review is done by a group of USPTO pre-examination clerks rather than a Patent Examiner.

Stage Two is Nearly Always a Rejection of the Claims

According to a study of all patent applications filed between 2017 and September 2020, 88.6% of all applications filed receive a rejection of the application. This means that only 11.4% of all applications get a Notice of Allowance as their first communication. This means that you should plan on a rejection of your application. Getting a rejection of the application is part of the normal patent application process and does not mean that the patent was not written correctly or that the person who wrote the application messed up. It is just a normal part of the process.

It is even common to receive multiple rejections in an application as part of the negotiation process. After a first, and sometimes a second rejection of the application, the Office Action may be called a “Final Office Action.”  But “Final” does not really mean final. The rules for replying to a Final Office Action are different from a Non-final Office Action, but by filing a Request for Continued Examination (with the accompanying government fee), you can buy more turns in the negotiation process.

What Are the Reasons an Application Is Rejected?

An office action is an explanation of the patent examiner’s best case for why the patent should not be patented. But it is not the end of the application. A rejection is an invitation to negotiate the patent claims and application with the examiner. When the USPTO issues an office action, the owner, inventors, and their patent attorney review the office action and decide how best to reply to each of the rejection points.

Although they are not labeled with these headings, there are seven key categories of information in an Office Action. They are timing for replies, Examiner feedback, formalities, objections, restrictions, rejections, and allowable subject matter. Some or all of these can be included in any Office Action. Below is an explanation of each category.

Keep in mind that even if you believe the Patent Examiner is wrong about something, many times it is cheaper and much faster to get an allowance by just agreeing to do what the Examiner asks for or finding a way to make your patent claims a little bit narrower. Often, a phone call with the Examiner can help clarify why the Examiner believes a particular rejection is appropriate when the written Office Action is not entirely clear.

1. Timing For Replies

The first key category of information in an Office Action is the Timing for Reply. On the second page of an Office Action, the Examiner will indicate how many months you have until a Response is due. Typical timing for a response is three (3) months from the mailing date (see Office Action first page) of the Office Action, though sometimes it is shorter (two (2) months or one (1) month). In most cases, you can pay for an extension of time up to six (6) months from the mailing date. Although you can request automatic extensions of time, doing so reduces, by the duration of the extension, any patent term adjustment time you may be granted when the patent is granted and so is discouraged. For more information about Patent Term Adjustment, please review this article on Patent Term Adjustment.

2. Examiner Feedback

Occasionally, though certainly not every time, the Examiner will provide additional feedback on a previous interaction between the Examiner and the applicant or their attorney. It is important to understand the Examiner’s feedback because sometimes it includes guidance as to how to prepare the response to the current Office Action.

3. Formalities

Often, the Office Action identifies formalities of the application that need to be fixed that were not previously caught by the USPTO pre-examination clerks, or some other information that is not specifically tied to a rejection. They can relate to anything, but often relate to minor formality amendments or relaying information, such as need to paragraph numbering, claims numbering or formatting, power of attorney, lack of support for claim amendments, and a summary of an Inventor Interview. The formalities are easily addressed and rarely act as a barrier to a patent.

4. Objections

Objections included in an Office Action most often relate to minor formal amendments that are needed before the application can be allowed but can also involve more serious issues. Examples of minor amendments include an amendment to the Title or Abstract, missing reference numbers in the drawing or specification, and missing antecedent basis in the claims. These types of objections are easily fixed and require only minor amendments.

More serious issues include objections for things that are claimed but not shown in the drawings or are not described in the specification, and objections for adding new matter/content to the specification, claims or drawings that was not in the original application. These types of objections can be more difficult to address if the content objected to was not in the original application. In some cases where the content was included in either the specification, or claims or drawings in the original application, it can be added to the others and claimed. But if it was not found in the original application, it cannot be added later.

5. Restrictions

When the Patent Examiner believes more than one invention is being claimed in the claims, or that more than one embodiment of the invention is specifically being claimed, the Examiner can issue a Restriction Requirement to require the applicant to restrict the examination of the claims to just one choice. There are legal boundaries for what the Examiner is allowed to restrict, but the Examiner also usually wins in arguments against a Restriction Requirement. However, there are amendments to the claims that can be made to help the claims that are issued cover multiple embodiments and inventions in diverse ways, and ways to have the final patent that issues still cover multiple inventions and embodiments. Rejections for including both method and structure claims in the same application are common. Talk to your patent attorney about strategies for preserving multiple inventions and embodiments within the same patent.

6. Rejections

The Rejections sections of an Office Action are the most important part and there are several grounds that an Examiner can use to reject the claims. The most common are rejections under 35 USC 112 for indefiniteness, 35 USC 101 for non-patentable subject matter, 35 USC 102 for anticipation, 35 USC 103 for obviousness, and a Double Patenting Rejection. Of all the patent rejections issued by Patent Examiners for US patent applications filed between 2017 and September 2020, 7.5% of the rejections were section 101 rejections, 24.3% were section 112 rejections, 21.3% were section 102 rejections, and 46.9% were section 103. A significant percentage of Office Actions include multiple types of rejections in one Office Action. Each of these types of rejections is described separately below.

35 U.S.C. 112 – Indefiniteness

Each section 112 rejection relates to something in the claims that is unclear, or “indefinite” for some reason. The indefiniteness may be caused by an unclear wording in the patent claim, or because the application or drawings make something in the claims unclear. Section 112 rejections are typically easy to overcome, assuming the content needed in your application exists and is clear. It is important that you review your patent application before it is filed to ensure the invention is clear and is in as complete a level of detail as you will need during negotiations with the Examiner. If the information you need to include to make your patent claims clear is not found in your application, there are strategies, such as continuation-in-part applications, that may be useable to overcome an indefiniteness rejection as well.

35 U.S.C. 101 – Non-Patentable

Rejections under section 101 relate to a decision by the Examiner that either the entire invention is unpatentable, such as by claiming a part of a human body in the invention, or the way it is expressed in the claims is not patentable. Depending upon the specific rejection, this can be a difficult rejection to overcome (such as in biology or pharmaceutical inventions or software or systems inventions). As of the publication of this article in 2022, the laws and procedures in the USPTO surrounding what is patentable and not patentable for several industries is not entirely clear, and negotiations with the Patent Examiner to resolve the invention claims to something that is patentable may take additional work and time.

35 U.S.C. 102 – Anticipation

A rejection under section 102 is a rejection based on a single patent or publication reference. The Examiner has determined that every element of a patent claim is disclosed by, or “anticipated by,” the single reference. The publication references can include anything that is in public knowledge, not just published patent references. This rejection can be overcome by showing that the reference does not disclose every element of the claim in the way it is claimed, or the claim needs to be amended to include elements not disclosed by the reference. This type of rejection is usually straight forward and either the reference discloses every claim element, or it does not. If you have some aspect of your invention that is not disclosed by the reference, you can overcome this rejection.

35 U.S.C. 103 – Obviousness

Rejections under section 103 are the most common type of rejection (nearly half). A rejection under section 103 states that an invention claimed would be obvious to someone of ordinary skill in the related technology based on knowledge in the public and/or one or more patent or publication references. Like with section 102 rejections, the publication references can include anything that is in public knowledge, not just published patent references.

The boundaries defining what is “obvious” is a bit of a gray area and is not a bright-line test. The rejection outlines where, in a combination of knowledge from the references, each element of a patent claim is found in the references and needs to provide an explanation of why the Examiner believes the combination is obvious. Despite requirements that the rejection be presented clearly and with sufficient support, it will not always be clear why the patent Examiner believes something is “obvious,” or why the Examiner believes they can combine multiple public references to form an obviousness rejection. Discussing the obviousness rejection and the reference(s) cited with your patent attorney will help to understand the Examiner’s position. There are many strategies that can be used to overcome section 103 rejections in a way that still protects your product or service and gives you an advantage in your market.

Double Patenting Rejection

A double patenting rejection is a rejection stating that the Examiner believes that the applicant owns another patent or pending application that overlaps in some way with the claims of the present application. In some cases, this rejection can be addressed easily by filing a Terminal Disclaimer that agrees that the overlapping patents will be owned by the same company (common ownership) and agrees that the overlapping patents will expire on the same date. In other cases, where the claims are identical or remarkably similar, the rejection cannot be overcome merely by filing a Terminal Disclaimer and will require filing a claim amendment to distinguish the patent claims from each other. See one consequence of filing a Terminal Disclaimer in the article Patent Term Adjustment.

7. Allowable Subject Matter

Another section often found in an Office Action is a section indicating that at least some of your patent claims are allowable or would be allowable if certain minor amendments were made. This is a great notice to receive in an Office Action and is generally an indication that even if you are still negotiating other parts of your claims with the Patent Examiner, at least the Examiner currently believes that there is something in your patent claims that deserves a patent.

What Can I Do Now?

There are many options for responding to an Office Action, and each one depends upon the rejection received, the specific situation for your company, and the experience of your patent attorney in deciding what is the best, most advantageous and cost-effective approach for you. Here are some options:

A- The attorney, and the inventor(s), can have a phone call with the examiner and discuss the rejection prior to filing a response.

B- Whether a call is held with the Examiner, your attorney can prepare and file a written response to the office action rebutting the rejection and/or amending the patent claims to overcome the rejection.

C- In some cases, and it is rarely the best option, you can re-file the application as a new application that includes more detail about your invention if something is missing that would help you overcome the rejection.

D- If, after review, you decide that the Patent Examiner is right and that there is nothing novel in the application, you can let the application go abandoned.

However you decide to reply to your Office Action, please contact a qualified patent attorney at Booth Udall Fuller, PLC to discuss the specifics of your invention and Office Action and help you come up with a strategy for responding. Our attorneys are experienced in developing invention protection strategies, Office Action response strategies, and assisting with any of your intellectual property needs.