The relationship you have with a patent examiner is important. Should your patent application get rejected or should you be sent an office action, you will then be in direct communication with a patent examiner. Worried about how to respond to your office action? Don’t know how to communicate with your patent examiner? Read on to find out how.
What is a Patent Examiner?
A patent examiner is a federal employee who works at a patent office. A patent examiner is usually highly educated and has a background in engineering or science. There are patent offices all over the world. The USPTO (the United States Patent and Trademark Office) is the official patent office for the United States.
What is an Office Action?
An office action is issued by a patent examiner. It is a written correspondence including required edits and suggestions regarding your patent application from the patent examiner to you. Your response to the Office action requires your signature. Most office actions must be answered in 3 months. If they are not answered in that time frame extension fees will likely be issued. There are no extensions beyond the 6-month time frame unless otherwise stated. If an applicant does not reply in a timely manner the application will be held as abandoned.
Types of Office Actions
There are several types of office actions including restriction requirements, non-final Office Actions, and final Office actions. In addition to office actions, there are other types of official letters you may receive which include a notice of informal defects and a notice of allowability. A notice is sent to identify one or more problems in the patent application or the applicants (your) correspondence. A notice usually has a two-month window for a response to be filed.
How to Communicate with a Patent Examiner
Once your application has been accepted by the patent examiner you must pay an issue fee. The fee can range from $350 if you are a small entity to $700 for a large entity. If you’re working with an attorney there may be additional fees to ensure that your product gets accepted, is reviewed for accuracy and ultimately mailed to you.
How to Communicate with a Patent Examiner?
During the patent application process, a patent examiner may reach out to you for a number of reasons. After they’ve conducted their extensive research utilizing a variety of databases, books, and journals, they’ll put together a report. The report will include the patent examiner’s research, sources, and decision on whether or not to approve your patent, reject it or whether or not an office action is needed to move forward. The report will then be sent to you or your patent attorney, should you have one. Depending on what is sent, the lines of communication will now be open.
Once you or your patent attorney has submitted your reply, the patent examiner will usually issue a written response as to whether the issues set forth in the Office Action have been overcome. It’s hard to imagine a patent examiner stands between you and a patent approval. Making it even more important that you understand how a patent examiner thinks and of how to communicate with them. The patent examiner wants what you want, to issue a patent on a solid invention.
While an office action may seem daunting, receiving an office action is meant to refine the scope of your invention for the marketplace. Don’t necessarily agree with something that is stated or required in the Office Action. It can be the catalyst for an open dialogue with your patent examiner. It may mean the difference between acceptance and rejection.
Contact your Patent Attorney to learn more.
