Responding to a First Office Action

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Within six months to two years after the filing date, the applicant will receive correspondence from the USPTO known as a “first office action” (sometimes called an “official letter” or “OA”). You can determine an approximate date when the USPTO will send the first office action by looking online in a recent Official Gazette under “Examining Corps.” Look for the appropriate examining group. Also you can call the clerk of the examining group. The Official Gazette and USPTO phone numbers are available on the USPTO’s website, www.uspto.gov.

The first office action may:

  • cite and enclose copies of prior art that the examiner believes shows the applicant’s invention is obvious or lacks novelty
  • reject claims
  • list defects in the specification or drawings, or
  • raise other objections.

Applications Rarely Allowed in First Office Action

It is very rare that an application is allowed in the first office action. More often, the examiner rejects some or all of the claims. Some examiners make a “shotgun” or “shoot-from-the-hip” rejection, flatly rejecting all claims for questionable reasons. Examiners sometimes do this because of the time pressures of work at the USPTO or sometimes to force the applicant to state more clearly the essence of the invention and its distinguishing features.

EXAMPLE: An office action may include objections such as:

  1. The drawing is not complete because it fails to show certain features that are recited in the claims. This objection is based on Patent Rule 1.83(a).
  2. The specification is inadequate because it does not demonstrate in sufficient detail how to make and use the invention. This rejection is based on Patent Rule 1.71(b).
  3. Because the specification is inadequate, the examiner rejects all claims because the claims are based on an inadequate specification. This objection is based on Section 112 of the patent laws (35 U.S.C. Sec.112).

Amendment in Response to First Office Action

The first office action will specify the time period (usually three months) by which a response (known as an “amendment”) must be filed. The response usually includes some or all of the following:

  • a summary of the amendments
  • a review of the rejections made by the examiner
  • a review of the references cited by the examiner
  • a summary of how the applicant changed the claims
  • a statement of distinctions and arguments as to prior-art references
  • a request for reconsideration of the examiner’s position
  • a discussion of dependent and other main claims
  • a discussion of any technical (Section 112) rejections
  • a request that the examiner write the claims, and
  • a conclusion.

Most rejections of claims are based upon prior art and are categorized either as Section 102 rejections (the invention is not novel) or Section 103 rejections (the invention is novel but obvious). If the rejection is based on Section 103, the examiner is tacitly admitting that the claims are novel. If a prior-art reference is strikingly similar to the claim, the claim is said to “read on” the prior art. In these cases, the claim must be amended, usually by narrowing it.

If it can be proven that the date of invention is earlier than the effective date of the reference, the applicant can “swear behind” and eliminate the reference (USPTO Rule 131). The date of invention is the earliest of (1) the filing date of the regular application or PPA, (2) the date of building and testing, or (3) the date of conception followed by diligence. The effective date of any U.S. patent reference is its filing date; the effective date of any other reference is its publication date. MPEP Sec.715 and USPTO Rules provide more details as well as limitations on the applicant’s right to “swear behind.”

The Applicant’s Duty to Disclose

If you are the applicant, you have a duty to disclose all information known to you, such as relevant prior art, which bears on the patentability of the invention. If a prior-art reference is found that is so similar that it makes your invention unpatentable, your application should be abandoned. As a general rule, you do not have to (and shouldn’t) admit or state anything negative about your invention.

Nothing New Added

An applicant can never add new matter to an application (USPTO Rule 118). New matter is any technical information, including dimensions, materials, etc., that was not present in the application as originally filed.

The following articles address issues that commonly arise in patent prosecution:

  • Patent Prosecution: The Road to Allowance
  • Responding to a Final Office Action
  • Patent Prosecution Problems:  Interferences, Divisionals, Reissues, Substitutes and Double Patenting

Portions of this article are derived from Nolo's Patents for Beginners.

LA-NOLO6:DRU.1.6.3.20141021.28794