The Examination Process: Deciphering Office Actions and Helping Your Attorney Respond

• Author: Dylan O. Adams
• Profession: Seattle-based patent attorney
• Pages: 193-218

193

12

The Examination

Process: Deciphering

Ofce Actions and

Helping Your Attorney

Respond

“e Director shall cause an examination to be made of the

application and the alleged new invention; and if on such

examination it appears that the applicant is entitled to a patent

under the law, the Director shall issue a patent therefor.”

—Title 35 of the United States Code, Section 131

Aer a nonprovisional patent application is led at the USPTO, it is

initially processed to ma ke sure that the basic application requirements

have been met. e application is categorized by type of invention and

is assigned to an “art unit” t hat will handle the application examina-

tion. Each USPTO art unit special izes in exami ning certain t ypes of

inventions, and is staed with patent examiners who have technica l

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194 PATENTS DEMYSTIFIED

backgrounds relevant to the types of inventions they examine. Patent

applications are examined on a rst-come, rst-served basis, which

accounts for the long wait from ling to the beginn ing of the exami-

nation. Some art units have a larger backlog than ot hers. For example,

computer hardware and soware applications typically have the lon-

gest wait time—oen two to three yea rs. On the other hand, mechani-

cal devices oen have a shorter wait—sometimes one to two years.

Each application is assigned to a patent examiner, who will be solely

responsible for the examination process. When an application comes

to the top of the pile, the examiner rst determ ines whether the claims

are directed to more than one invention. If so, the applicant will be

required to select one invention for examination. e examiner then

reviews the patent claims and does a prior art sea rch to determine

if the invention dened by the patent claims is new and nonobvious

compared to the prior art. Other less-substantive formal ity require-

ments may also be addressed.

e examiner wil l dra a formal document, called an O ce Action,

which sets forth rejections that the exa miner believes prevent the appli-

cation from being allowable. Applicants then have the opportunity to

amend the patent claims and/or argue against the rejections. In cer-

tain limited circu mstances, the drawings or specication may receive

minor edits as well. e patent attorney representing the case wil l dra

a formal response that sets out any arguments and a mendments made

to the application, and this response is typically led within two or

three months of when the Oce Action was received.

is back-and-forth will continue until the examiner allows the

application, or t he applicant gives up and abandons the application.

Alternatively, if the applicant disagrees with the reject ions and the

Examiner is unwi lling to compromise, the applicant can appeal t he

case to an appeals board at the USPTO and ult imately to federal courts

if necessary. If the exam iner allows the application, nal issue fees are

paid to the USPTO and the patent application will issue as an enforce-

able patent shortly thereaer.

When preparing and budgeting for the exam ination process, appli-

cants should expect application rejections as a natural pa rt of getting a

patent issued. Again, the examinat ion process is like a negotiation, and

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