Office Actions

• Author: Steven H. Voldman
• Profession: Is an IEEE Fellow and graduate of Massachusetts Institute of Technology (MIT)
• Pages: 193-218

From Invention to Patent: A Scientist and Engineer’s Guide. First Edition. Steven H. Voldman.

© 2018 John Wiley & Sons Ltd. Published 2018 by John Wiley & Sons Ltd.

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7.1 Introduction

In this chapter, Office Actions (OA) and the response are discussed. The chapter first

discusses the Office Action from the United States Patent and Trademark Office

(USPTO). Understanding how to read the Office Action from the patent examiner and

how to write a response is a key to the invention process. The chapter also focuses on

the basics of how to write a USPTO OA response and discusses the European Union

(EU) Office Action and how this differs from the USPTO OA.

7.2 Office Actions–USPTO

After submission of a patent application to the USPTO, a response from a patent exam-

iner will be provided [1]. Understanding how to read the Office Action from the patent

examiner is critical to prepare a response to the letter. From the content of the Office

Action, a response must be sent back to the USPTO addressing the issues the patent

examiner addressed in the patent application (Figure7.1).

7.2.1 Reading theOffice Action

Learning how to read an Office Action is an important skill to understand the process-

ing of your patent. By being knowledgeable on how to read the Office Action, one can

learn to write an Office Action Response [2–6].

In this section, the content of the Office Action is discussed (Figure7.2). For US appli-

cations, the Office Action document uses the letterhead of the USPTO and contains the

address of the USPTO [1].

7.2.1.1 Application Number

Upon submission of a patent application, an application number is assigned to the case.

This application number serves as a reference to the specific case and is listed on the

Office Action document.

Office Actions

From Invention to Patent: A Scientist and Engineer’s Guide194

7.2.1.2 Attorney Docket Number

An Attorney Docket Number is also listed in the patent application. Upon submission

of a patent application, the Attorney Docket Number is listed on the Office Action

document and serves as a reference for the processing patent attorney.

7.2.1.3 First Named Inventor

In the Office Action, the application refers to the first named inventor. On the front

page, the application has the full name of the first named inventor. The last name of the

inventor will be used throughout the Office action. If the patent application has more

than one inventor (e.g. coinventors), the patent application will refer to them as “etal.”

Patent

application

Patent office

Office

action

Inventor

Figure 7.1 Office Action and USPTO.

Application Number

Attorney Docket number

First Named Inventor

Law Firm

Examiner

Art Unit

Filing Date

Mail Date

Status

Figure 7.2 Contents of a USPTO Office Action.