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What is an Office Action?

Once the patent application is filed, the USPTO examiner will look for prior art and determine whether the specification meets all the requirements for a patent. If not, an official document “office action” will be issued disclosing any issues with your patent application.

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Causes of Office Action

You might be thinking that what can be the causes of office actions? Then, here are some reasons that can bring office action for your patent application. 

  • Error in the specification or improper format.
  • The obviousness of invention.
  • Issues with the subject matter.
  • Lack of novelty and industrial applicability.

How do we response to office action?

We at Wissen Research provide an Office Action response which is best favourable to overcome the Patent Examiner’s objections or rejections. We prepare a thorough response to each of the examiner’s objections according to different jurisdictions’ Patent office rules and guidelines. We’ve dealt with a wide range of objections and denials such as USC 101, USC 102, USC 103 and USC 112.

Firstly, we identify the types of issues raised by the examiner, and then we file an appropriate response accordingly by:

  • Applying amendments to claims, specifications and illustrations.
  • Making persuasive arguments that the examiner may have misinterpreted the prior art.
  • Clear distinctions between the subject invention and the prior arts and elaborating by taking reference.

Want to know winning strategies for office action? Read our blog: Winning Strategies For Responding To an Office Action

Why Choose Wissen Research For Your Office Action Responses?

  • In-house professionals and Of-Counsels with hands-on experience in designing an effective prosecution strategy for any jurisdiction’s patent applications.
  • Experienced personnel from major technical domains to counter the technical arguments of the examiner.
  • Strategic collaboration with legal experts from several nations.
  • Exceptional quality at an affordable cost.
  • For clients who want to frame their responses, we can handle the tedious task, such as performing a detailed technical analysis of the Examiner’s references and identifying the specific differences between the cited art and the invention, saving the Attorney time in drafting the Office Action response.

FAQ - Office Action Response

As per USPTO, the deadline for responding to an Office Action is typically three months from the mailing date. You can request an extension of up to three additional months after the payment of extension fees. We recommend connecting with our subject matter experts as the deadline for responding to an office action varies by jurisdiction.

In case you miss the deadline for responding to an office action, your patent application may be considered abandoned.

A strong office action response clearly addresses each objection or rejection raised by the examiner. Make sure that the response provides concise legal arguments supported by USPTO guidelines or relevant case law and explain any claim amendments you make.

There’s no fixed cost of hiring professionals for assistance as it varies based on factors like the project’s complexity and jurisdiction. For an accurate office action assistance quote, get in touch with our experts asap.

Yes, applicants often revise their claims to overcome the examiner’s objections or rejections. Claims can be ammended to clarify language, narrow the scope of claims, or better distinguish the invention from prior art. However, any changes must comply with USPTO rules and should be clearly explained.