The Patent Offices of the various jurisdictions around the world issue Office Actions. These actions indicate many things, including the status of the Patent Application. An Office Action reflects the current opinion of one or more Patent Examiners regarding a Patent Application.
Types of Office Actions for Pending Applications
- Filing Receipt
- Notices of Abandonment
- Notices of Allowance
- Notices of Publication
- Notice to Correct Application Papers
- Patent Cooperation Treaty Information
- Payment of Additional Governmental Fees
- Substantive Examination by Examiners
What is a Substantive Examination by the USPTO?
A USPTO Substantive Examination Office Action generated by an Examiner’s can include:
- Under 35 U.S.C. 101, the Examiner concludes if the Application is directed to patentable subject matter
- Under 35 U.S.C. 102, the Examiner opines if one or more of the claims of the Application are novel
- Under 35 U.S.C. 103, the Examiner can argue if one or more of the claims of the Application are obvious in view of the prior art
- Among other things, under 35 U.S.C. 112, the Examiner determines if the Specification enables one in the art to practice the invention and whether the claims particularly point out and distinctly claim the subject matter the Applicant regards as the invention
Applicant Interviews with the Examiner
The USPTO allows Applicants (or their representatives) to conference with Examiners. These conferences can simplify 35 U.S.C. 101-103 and 35 U.S.C. 112 matters propounded by the Examiner and streamline the Applicant’s prosecution and the Examiner’s examination of the Patent Application. Over the years, it is Business Patent Law’s experience that verbal communication between the Examiner and Applicant’s attorney can assist both sides in better understanding the opposing side’s arguments.
Types of Applicant Interviews
There are three primary types of applicant interviews with the examiner for these pending office actions:
- Telephone conference
- Video conference
Some USPTO Examiners require the Applicant to use the USPTO Automated Interview Request system to schedule an interview.
Have Questions About Office Actions?
If you need legal assistance in responding to the USPTO Office Action for your Patent Application, please contact Business Patent Law, PLLC. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.
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