Los Angeles Patent Office Action Attorney

The process of submitting a patent application is an arduous one, lined with red tape at seemingly every corner. And, unless you have prior experience in successfully navigating the patent application process, the knowledge and skills necessary to overcome these challenges may fall outside your existing skill set. While it’s possible to learn what you’d need to know to successfully deal with patent office actions, doing so will consume an incredible amount of time. At Cohen IP Law Group, our Los Angeles patent office action lawyers offer another option: Allow us to deal with Patent Office Actions on your behalf. With our knowledge of the patent application process, we’ve enjoyed a successful track record of overcoming all types of non-final office actions.

The Patent Application Process

After you file a patent application with the USPTO, a patent examining attorney is assigned to your application. The examiner will review your application to determine if all of the required formalities are met. If everything checks out, the examiner will then determine if your application is novel in view of the existing patent applications and registrations. If the examiner finds any reason to object to or reject your application, they will issue an Office Action rejection.

The first office action is not received for at least several months after the filing of the patent application and, more typically, well over a year from the filing date, depending upon the backlog of the USPTO and the efficiency of the particular examiner assigned to your application.

As your patent lawyer, all Office Actions will go directly to our office for our review. We will review the Office Action and contact you to discuss the scope of the rejection and how we intend to overcome the rejection if retained by you.

What Are Patent Actions?

A patent office action is an official communication from the U.S. Patent and Trademark Office (“USPTO”) to an applicant about their patent application. This communication often relates to the patentability of the invention described in the application. Office actions are part of the examination process that every patent application undergoes. However, some patent actions are more challenging to deal with than others. 

There are various types of office actions, but they generally fall into the following categories:

Non-Final Office Actions: This is an initial rejection or communication from the patent examiner. It typically identifies issues or concerns with the patent application and often cites prior art or previous inventions or publications that may be relevant to the patentability of the invention. The applicant can respond to a non-final office action by arguing against the examiner’s rejections, amending the claims or the specification, or providing other types of clarifications.

Final Office Actions: If the examiner is not satisfied with the applicant’s response to the non-final office action or if there are remaining issues, the examiner might issue a final office action. While it’s termed “final,” it doesn’t necessarily mean the end of the road for the patent application. The applicant can still respond, but the available responses are more limited than with a non-final office action. For instance, the applicant might file a Request for Continued Examination (“RCE”) to continue discussions with the examiner or appeal the decision to the Patent Trial and Appeal Board (“PTAB”).

Advisory Actions: These are issued when the applicant’s response to a final office action does not overcome all of the examiner’s objections or is not fully compliant with the formal requirements.

Notices of Allowance: If the examiner determines that the patent application meets all the patentability requirements, they will issue a Notice of Allowance. This means the patent application is on its way to being granted, provided the applicant pays the required issuance fees.

Ex Parte Quayle Actions: This is a unique type of action that’s neither a rejection nor an allowance. It’s issued when the patent application is in condition for allowance, but there are minor formal matters to be addressed, such as corrections to the drawings or the submission of a proper oath or declaration.

If you receive an office action, it’s crucial to review it thoroughly, understand the concerns or issues raised by the examiner, and respond appropriately and timely. Many who find themselves in this situation work with experienced patent attorneys to help navigate this process, as responding effectively to office actions can be complex and requires a deep understanding of patent law and practice.

How Common Are Office Actions?

Office Actions are fairly common, and you should, at a minimum, expect at least one Office Action, especially for utility patent applications. At Cohen IP, we have been successful in overcoming rejections, either by drafting arguments against the examiner’s findings or by amending the application and claims to overcome the rejection. In some cases, we have found conducting an interview with the examiner over the phone can be helpful in overcoming rejections, particularly with second Office Actions or Final Office Actions.

Do You Have Questions About How to Respond to a USPTO Office Action?

If you recently submitted a patent application and received a non-final office action, reach out to the dedicated Los Angeles patent office action attorneys at Cohen IP Law Group to discuss how we can help. At Cohen IP, we represent Fortune 500 and midsize companies, as well as emerging startups and entrepreneurs, helping them effectively navigate the complexities and challenges of the patent application process. Even if we have not drafted your original patent application, feel free to call our office for a quote for our response to your office action. To learn more, give us a call to schedule a confidential and no-obligation consultation at 310-288-4500. You can also connect with us through our online contact form.