A Patent Office Action is an official letter written and sent by the United States Patent and Trademark Office (USPTO) during a patent examination procedure. It lists any legal problems with your patent, as well as with the patent application itself. The letter is then mailed to an applicant for the patent. As the patent applicator, you will need to resolve any legal problems before the patent can be approved.
Filing a patent can require a leap of faith. Even when you have the soundest legal advice behind you, the process can still be filled with a lot of back and forth.
When you file a patent, there are a few things that can happen: the patent is granted, or refused in the form of rejections or objection.
It’s important for patent applicants to understand that when a patent examiner issues an office action that refuses to allow all claims, that does not mean that the patent examiner has rejected the invention. Though the term “rejection” will be used, it’s not the invention that has been rejected, but rather it’s the patent claims that are being rejected in their current form.
Patent examiners only examine the patent claims that are submitted and the job of the patent examiner is to make sure the claims are patentable.
Rejection and Objection
Claims can either be rejected or they can be objected to, and in some cases a claim can both be rejected and objected to for the same reason. There are actually very few differences between rejections and objections from the applicant’s perspective. Both are denials, or refusals, that need to be addressed accordingly for a patent to eventually be granted.
“Rejection” occurs when the refusal to grant claims is because the subject matter as claimed is considered unpatentable. The term “rejected” is used by a patent examiner when the substance of the patent claims being sought are unallowable under patent law.
“Objection” occurs if the form of the claim (which should always distinguished from its substance) is improper. An example of an “objection” is if a patent claim is dependent on a previously rejected claim. You can also receive an objection if claims have not been properly grouped together in violation of patent law.
There is a clear difference between rejection and objection, although they seem very similar. A rejection involves the merits of the claim and, therefore, is subject to review by the Patent Trial and Appeal Board (PTAB). An objection may be reviewed only by way of petition to the Director of the USPTO.
Generally speaking, rejections relate to the law (U.S. Code) and objections relate to the rules (Code of Federal Regulations). There is however, overlap between the two legislations. For that reason, it is entirely possible that you can receive an objection and a rejection at the same time.
Fixing the Application
Regardless of whether you receive an objection or a rejection, or both, you must fix the application in one-way or another. The goal of the application process is to eventually get a notice of allowance from the patent examiner. That can only be granted when only allowed claims are present in the application. Thankfully, you are always able to fix and amend claims and/or try and make convincing arguments to persuade the examiner that you are correct and they were mistaken.
What to Expect from the Patent Application Process
Each patent application filed with the USPTO goes through a rigorous process of examination. It will be assigned to a “patent examiner” (an employee of the USPTO), to ensure its completeness and validity. He or she will inspect the application to ensure that:
- the invention meets the requirements for patentability, and
- the application itself follows the required USPTO format and language.
This process typically takes between one and three years and during that time the examiner and your legal team and you will exchange letters or phone calls until you reach an agreement about which parts of the invention the patent will cover, if any.
Because of this rigorous scrutiny, it’s advised that you work with a patent attorney. There are numerous discussions involved in receiving a patent and your attorney will be able to walk you through all of them.
It should be noted that once you file for a patent, the process is not complete. Under United States patent law, when a person files for a patent the legal document, called a “provisional application” establishes an early filing date, but this does not mature into an issued patent until the applicant files for a regular non-provisional patent application within one year.
The provisional patent application can only be pending for 12 months prior to becoming abandoned. Thus, filing a non-provisional patent application that claims the benefit of the provisional application must be done within 12 months. Failure to do so may forfeit your rights to claim the benefit of provisional application. Such benefits of the provisional application include:
- ease of preparation,
- lower cost, and
- the ability to use the term “patent pending”
One you file for the provisional application you are able to use the term “patent pending.” This can only only be legally used when a patent application has been filed, and may have significant marketing advantages for your product. This marking can also serve as notice to potential infringers who copy your invention and that they may be liable for damages once the patent is issued.
Having prepared, filed, and prosecuted patent applications (domestic and foreign), our firm is highly respected for its knowledge and patent prosecution.
Our attorneys have experience in all areas of design patents, including:
- Patent Search
- Intellectual Property Patents
- Computer Patents
- Gaming Devices
- Mechanical Device Patents
- Medical Device Patents
- Patent Portfolio Management
- Patent Office Actions
- International Patents
- Patent Litigation
Reilly Intellectual Property Law Firm
Reilly Intellectual Property Law Firm provides patent services to protect the inventions that change and shape our world. We handle handles patents, trademarks, copyrights and licensing legal services in Denver. Our experienced attorneys provide strategic guidance, patent counseling and prosecution, new product clearance and licensing, as well as counsel regarding patent enforcement and how to avoid possible infringement issues.
Our patent attorneys actively and aggressively represent plaintiffs and defendants in a wide variety of proceedings before courts both domestically and internationally. We provide solutions that anticipate our client’s need to protect their intellectual property so that their business thrives. We would love to work with you to develop a dynamic strategy that addresses your patent, trademark, copyright, and licensing concerns.