What you should know about Office Actions

An office action is a document written by an Examiner in a patent examination procedure in response to a patent application. The office action typically cites prior patent or publication termed ‘art’ and gives reasons why the examiner has rejected, objected to or allowed the applicant's claims. It is a common occurrence in the examination procedure to receive such an action. Do not be discouraged if an office action occurs after you first file. This is part of a larger process to ensure only quality, novel invention make it to issuance as a patent.

An office action may be "final" or "non-final". In a non-final office action, the applicant is entitled to reply and request reconsideration or further examination, with or without making an amendment. In a final office action, the applicant has options for reply; 1) file another response to each and every objection and rejection the Examiner has set forth; or 2) the applicant may appeal rejection of claims to the Board of Patent Appeals and Interferences. Replies to final office actions must be in accordance with 37 C.F.R. 1.113-1.114.

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