WHAT IS AN OFFICE ACTION?
An “office action” is an official letter from the United States Patent and Trademark Office representing a patent examiner’s review of the status of a pending patent action. Typically, an office action indicated that none, some, or all of the pending claims are allowable, and the patent examiner’s concerns regarding the claims. There are two main types of office actions that are issued “non-final office actions and “final office actions.”
It is of note, that nothing with the patent office is ever truly final, just additional fees must be paid for amending claims in a response to a “final office action.”
NON-FINAL OFFICE ACTION?
Non-Final Office Actions are always the first office actions issued for a patent application. In non-final office actions the patent examiner states his opinion on the patentability of the claims. After a review of the non-final office action the application has the option of at least one of the following 1) arguing the examiner is incorrect, and 2) amending the claims to overcome the examiner’s rejections. While responding to the Non-Final Office Action, the patent attorney should state in the response that the response to the office is “An Amendment/Reply to an Office Action under 37 CFR 1.111.
FINAL OFFICE ACTION?
Final Office actions are typically second office actions that are sent by the examiner after reviewing the applicant’s response to the first non-final office action. The Final Office Action may include 1) the same rejections as the first non-final office action or 2) new rejections. When responding to final office actions, the applicant is afforded the same opportunities as responding to a non-final office action, except government fees must be paid if the applicant is amending the claims. If the applicant is not amending the claims, the patent attorney should state in the response to the Final Office Action that the response to the office action is “A Reply to an Office Action under 37 CFR 1.116.”
There are three major differences between responding to a non-final office action and a final office. Those being 1) fees required to amend the claims, 2) fees associated with information disclosure statements, and 3) timely to file an appeal to the Board of Appeals and Patent Interferences.
1) When a final office action is issued review of the claims on the merits of the claims is “closed.” Therefore, to amend the claims after a non-final office action a Request for Continued Examination (RCE) is required. Essentially, a Request for Continued Examination reopens prosecution, allowing the patent attorney to amend the claims. If the patent attorney’s amendments and arguments overcome the current rejections when filing an amendment with an RCE (amendment under 37 CFR 1.114) the next office action issued will be a non-final office action or a notice of allowance. However, if the amendments and arguments are not persuasive, the next office action issued will be a final office action. Because of the additional fees to amend the claims, when filing an amendment under 37 CFR 1.114 it is crucial to have an examiner interview to discuss the merits of amendments. Inventors and start-ups should understand that a typical patent prosecution process includes at least 1-2 RCE’s being required.
2) There are fees associated with filing information disclosure statements. Information disclosure statements are letters from the applicant to the patent office stating that the applicant has found new references that might affect the patentability of their invention. When filing a IDS along with an RCE (or before a final office action has been issued), the government fees associated with the IDS may be reduced. This can save a decent amount of money for a corporation filing patents in different jurisdictions, where the office actions in different jurisdictions may include different references that are needed to be submitted to the USPTO.
3) Applicants are able to appeal an Examiner’s decision if the claims have been rejected twice. Therefore, if the claims were not amended within a response to a non-final office action, the claims are timely to be appealed. Although I don’t recommend filing an appeal after a first final office action has been issued for start-ups, for major corporations this a strategy that they can take. During appeal (takes 2-3 years) or Pre-Appeal Conference Request (6 months -1 year), a panel will review the claims, cited art, and examiner’s rejections to determine if the examiner’s rejections have merit.