An office action is the start of a negotiation, and most applications get one.
Receiving a rejection says very little about whether your patent will issue. It is a document written by a person working a docket under time pressure, and answering it well is a craft.
Drawings from expired US patents. Lit: US 890,787, Elijah McCoy, Lubricator, filed 1907, granted 1908. Shown against US 1,338,385, Elijah McCoy, Air Brake Pump Lubricator, filed 1919, granted 1920.
We read a rejection the way it was written, because we used to write them.
Maurice Williams spent seventeen years at the USPTO issuing office actions. That is the specific experience this stage rewards: knowing which rejections are solid, which rest on a strained reading of the claims, and which arguments an examiner has heard too many times to credit.
A response separates those. We amend where amendment costs little scope and argue where it does not, and we keep the file history clean, because everything said during prosecution can be used against the patent later.
We also request interviews. A fifteen-minute call frequently resolves what three rounds of paper will not.
What we handle
- Rejections under sections 101, 102, 103 and 112
- Claim amendments that preserve scope wherever it can be preserved
- Examiner interviews, with a written summary of each
- Requests for continued examination and appeals where they are worth filing
- Continuations and divisionals covering what you built since
Questions we get about this.
What is a patent office action?
An office action is a written communication from a USPTO examiner setting out why some or all of your claims are being rejected or objected to. It cites the prior art relied on and gives the reasoning.
A first office action rejecting every claim is ordinary. Most applications receive at least one before anything is allowed.
How long do I have to respond?
A patent office action normally sets a shortened statutory period of three months, extendable up to six months by paying an extension fee. Missing the final date abandons the application.
The extension fee rises with each month, so responding inside the original three months is cheaper as well as safer.
What do the section numbers mean?
Section 101 is eligibility, and is where software and diagnostic inventions are most often rejected as abstract ideas or natural phenomena. Section 102 is anticipation, meaning a single prior reference already shows your invention. Section 103 is obviousness, where an examiner combines references. Section 112 concerns the disclosure itself, including whether the claims are definite and supported.
Which section you are facing changes the response entirely. A 102 rejection is beaten on the facts of the reference; a 103 is beaten on whether the combination makes sense; a 112 is usually beaten with amendment.
Is a final rejection actually final?
Not in the way it sounds. After a final rejection your options narrow, but they include filing a request for continued examination to keep prosecuting, appealing to the Patent Trial and Appeal Board, or filing a continuation.
What changes is cost. Each route carries its own fee, so a final rejection is the point where the economics deserve a fresh look.
Can you take over an application someone else filed?
Yes, and it is common. Bring us the application and the office action, and we will tell you what we think is recoverable before you commit to anything.
Where a previous response has already narrowed the claims or made statements that limit them, we will say so plainly rather than take on a case we cannot improve.
Bring us the letter and the deadline.
Send the office action and the date on it. We will tell you what it would take to answer and whether it is worth answering.