Trouble in River City: first patent office actions

Many inventors become very discouraged by first office action rejections of their United States applications. One reader requested that I explain why one should not despair at this stage, and so here are my observations and recommendations:

First point: what is an office action? An office action is a formal letter from your patent examiner on the merits of your application. This letter may be very short or very long, depending upon requested changes to drawings, text or changes to the long sentences known as claims (I discussed claims in detail in a previous article).

Second point: Many first office actions reject all the claims in the application. The good news is that although technical information cannot be altered, the claims can be modified. In fact they can be modified (almost endlessly it often seems) prior to and after obtaining a patent. Claim sentences are precise requests for protection of your invention, and so they vary in scope and technical detail. However, a claim cannot protect an invention feature that is not disclosed in the application. Moreover, these features must be fully described to support a claim’s content and scope.

Third point: Patent practitioners cannot predict pre-existing subject matter in the United States patent literature that detracts from the patentability of your invention. This result occurs in part because a standard patentability search is not comprehensive. Furthermore, the patent examiner completes his or her own independent search of patents and patent applications. More often than not, the examiner’s search will uncover previously existing devices or methods with features similar to the applicant’s invention.

Fourth point: Patent examiners may find pre-existing subject matter in related patent office categories, in addition to the precise category of your invention. For example, with a patent application for a rotary brush bristle of an industrial wheel, the examiner may also look at toothbrush patents for brush bristle features that these two categories have in common.

Fifth point: Your patent practitioner will initially draft claims that are very broad requests for protection. Thereafter ‘the ball is in the examiner’s court’ to narrow the scope of protection of these claims and that is often why your claims are initially rejected. The examiner often rejects broad claims by relying upon prior existing subject matter from his or her own search. Thereafter, the patent practitioner must explain why this subject matter does not overlap with the protection requested in the claim sentences. Or, as is often the case the patent practitioner must ‘draft around’ the pre-existing subject matter so there is no overlap between pre-existing subject matter features and the applicant’s claimed features.

Sixth Point: Drafting a reply concerns requires time and investment. In my practice, preparation of a reply to a first office action requires at least two months and between fifty and one hundred pages of text. If the pending invention has been on sale, there will also be affidavits, customer surveys and sales analysis to demonstrate that the invention is commercially successful and therefore not similar to pre-existing subject matter. So, assist your practitioner in any possible way to present a convincing reply to the examiner. You have a lot at stake and your investment requires your time and attention.


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