If you are unsure about what exactly the USPTO Examiner is requesting from you, we understand how confusion can turn to panic.
While you review the USPTO letter, it's good to know:
A USPTO examiner response - specifically an objection or rejection is not necessarily the end of the road and it doesn’t mean that your invention is not going to be granted a patent.
There might be several parts to the Office Action or Notice, but usually the Examiner is simply separating and addressing each item that needs to be considered.
Its important to formulate a strategic response so that you better your chances of having your patent application allowed. An experienced patent professional can see the road ahead and give you options based on your goals and budget.
Below is specific information to keep in mind for any type of USPTO action you've received:
Claim Objections & Rejections
A USPTO Examiner has an obligation to conduct thorough searches on other inventions (prior art) and report them in the Office Action. This may lead to either an objection or rejection due to an item in the market that relates to your invention too closely.
Office Actions might appear to be negative and clients can be put off by the tone of the letter but receiving one is often part of the patent prosecution process. You or your representative have an opportunity to prepare responses, arguments and add information to amend your claims. By amending your claims through an office action response to prove absolute novelty, you can overcome both objections and rejections. This process helps to create truly innovative items.
There are precise rules and guidelines for how the description and drawings or figures in your application need to be prepared and presented. Sometimes the objection can mean that there are significant amendments that need to be made to the specification and sometimes there are a few minor tweaks here and there that will satisfy the Examiner's concerns.
Drawings can be objected to for numbering issues, clarity issues, and other factors relating to the type of drawing. Descriptions can be objected due to the lack of appropriate structure and headings.
Final Office Action
There are many reasons why an office action might be labelled as FINAL. Give us a call (858.263.7554) to discuss your specific scenario - there are ways to continue the prosecution process. FINAL doesn't necessarily mean its the end of the road for your invention or that there's nothing else you can do to move forward.
The USPTO will review your application to check if there are any parts missing or lacking information in the application. They will also check for formal requirements such as the format of your application, particular wording styles and the way that it was filed. The USPTO has specific rules and guidelines about how to submit your application.
Some common notices might include 'Notice to file missing parts', 'Notice of non responsive reply', and 'Notice of non compliance specification'.
If you have any questions please call us at 858.263.7554.