USPTO Office Actions
The USPTO’s reply to a patent application is called an “Office Action.” In the first Office Action, the USPTO initially examines the patentability of your invention. The USPTO typically rejects most – if not all – of the claims in a patent application in its first Office Action, essentially challenging us to prove that your invention is patentable. In order to get broad protection, we’ll have to persuade the USPTO to allow as many of the claims as possible. In subsequent Office Actions, the USPTO may make similar arguments, which require more fine-tuned replies. You usually get only two Office Actions for your initial filing fee and can usually continue prosecution (i.e. beyond the second Office Action) by paying additional fees to the USPTO. It is not unusual to have two or more rejections from the USPTO.
In order to overcome the USPTO’s rejections, we’ll have to craft a reply to the Office Action with legal arguments that technically distinguish your invention from the prior art. The key to this analysis is distinguishing how the elements of your invention (as defined in the claims) differ from the elements of the prior art. Inventors are generally very good at spotting the technical differences (for example, by creating a simple chart), and we can describe these differences to the USPTO using the proper legal language.
