Brown & Michaels
How do I read an Office Action?
Step 2: The Office Action Summary
The second page of the Office Action will be the Office Action Summary form (PTOL-326). We'll review each of the sections, referring to this example page:
Period for Reply
This section has the most important information of anything on this page - how long you have to reply to the Office Action. By law, you have six months to respond, unless the Examiner sets a shorter date - and he nearly always will set a shorter date. It is vital that you keep track of this date. If you do not file a reply within the time given (or pay for an extension with a later reply), the application will go abandoned.
The reply period is normally set as a number of months - most often one, two or three months. In this example, the reply period is set at three months from the mailing date. So, if you have three months to reply, you must file a reply on or before the same day in the third month after the one in which the action was mailed. Since our example was mailed on November 17, 2009, the reply would be due on February 17, 2010.
If the reply date is a Saturday, Sunday or National Holiday, the actual reply date is the next work day in the USPTO.
Sometimes this period is expressed as a number of days - most often thirty days. In that case, you must count the actual number of days to determine the reply date. As an example, if you have one month from February 22, 2005, to reply to an action, the reply is due March 22nd. If you have thirty days, it is due March 24th.
The time to reply can usually be extended by payment of an extension fee with the reply. See the USPTO fee schedule for the amount of this fee - it increases for each month's extension. However, you cannot extend the deadline to more than six months from the mailing date.
1. Responsive to... If the Examiner was responding to some paper you had filed earlier, the date of this correspondence would be listed here. In this example, this action is in response to a response we filed on August 24, 2009. It is important to look at this section if you have filed something you expect the Examiner to react to, so that you are sure that the paper was not lost.
2. Final / Not Final: The Examiner will normally check one of the two boxes here to indicate whether or not this Office Action has been made "final". There are a limited number of ways to reply to "final" actions - we will discuss that in more detail later on. In this example, the Examiner has forgotten to check the "non-final" box - if you get an office action like this one, you need to look at the narrative pages to see if the Examiner has declared the action "final". If he does not say so, it isn't.
3. "Ex Parte Quayle": If this box is checked, the Examiner has determined that your application is in condition for allowance, except for "formal matters" - usually, correction of minor and obvious mistakes. Your response to the Action will be limited to correcting these mistakes.
Disposition of Claims
This section summarizes the claims in the application and their current status. The reasons for each of these dispositions will be given in detail later on in the Office Action. At this point, you want to check and see that all of the claims you think you have pending are listed in at least one of the categories - were any claims you added in earlier filings listed here? Were deleted claims dropped properly?
4. Pending - the numbers of claims which remain "alive" in the case. In the example, claims 14-21 remain pending, all of the other claims having been canceled before this Office Action was sent.
4a. Withdrawn - these claims are "alive", but the Examiner is not reviewing them because of an election in an earlier Restriction Requirement or Election of Species (discussed later)
5. Allowed claims - These claims are ready for patenting - congratulations!
6. Rejected - The Examiner feels these claims are not patentable for one reason or another (see below). All of the claims in this example are rejected.
7. Objected to - These claims are not patentable for reasons of form or structure, but would be patentable if the problems are fixed. Usually this is because the claims are dependent on a base claim which is rejected, but would be allowed if they were rewritten in independent form.
8. Subject to restriction or election - the Examiner has decided that there is more than one invention presented in the application (restriction) or has determined that there are more than one species of the invention (election). In this Action, he will require you to choose one invention or species. Restrictions and Elections are discussed in greater detail later.
If any of the boxes here are checked, the Examiner or the Official Draftsman has found a problem in some parts of the application, other than the claims. These problems will need to be corrected in the reply to the Office Action.
If you claimed priority from an earlier foreign filing, make sure that the Examiner has acknowledged receiving your priority claim by checking one or more of the boxes in this section.
This section just lists any additional papers which should have been sent with this Office Action. If the Examiner has checked any of the boxes in this section, make sure that the item he checked is included in the package of material you received.
Don't forget our "Patent FAQ" page - it has lots of information about patents and the patent process.
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