As a Texas Patent Lawyer, I can tell you that when you are working to secure a patent, you can expect to receive written communications from the United States Patent and Trademark Office once the examination process begins on your invention. In many jurisdictions, these documents are called Office Actions.
In and of themselves, Office Actions are not bad.
Actually, they are a normal part of the process of receiving a patent. An office action serves to notify the applicant of problems with the application, whether it’s regarding some or all of the claims and what must be done to make the claim patentable.
A Series Of Office Actions From The Patent Examiner
After you submit your application to the USPTO, it will take approximately 16- 20 months before you receive your First Office Action in a series of office actions from the patent examiner.
As the applicant, you will need to respond fully to each item in the office action in order to get to the next step, until the patent application is found to be allowable and a notice of allowance is sent to the applicant.
The First Office Action in the first round is called a non-final office action. Unless the examiner allows the patent (which is the goal, but is rarely the case at this juncture), the First Office Action is typically followed by the Second Office Action called the final office action.
If you still have not persuaded the examiner, as we see in many cases, then we go to what is called the RCE, or Request for Continued Examination. You pay a hefty government fee, and you adjust your claims.
That’s just round one. If your patent is still denied at this point, you rinse and repeat.
Office Actions Take Time, But Eat Away at The Value of Your Patent, Too
Each response to an office action puts information about your invention in the public record. You and your patent attorney will be crafting replies, making arguments, changing the claims, and adding limitations. Every time that’s done, the patent loses value. More and more file history is being created that that can give your competitors the ammunition they need to simply design around your claims.
Think about it. When you are forced to say on the public record as a response to an office action that, “No, that feature is not in my product. It is in the prior art, but we’re different from the prior art because of x, y, and z reasons” — those reasons are now grounds for why your competitor won’t infringe on your patent when they put x, y, and z in their product.
By continuing to make these arguments, you create more and more opportunities for competitors to not only know what you are up to, but to simply design around and avoid your patent entirely.
When It Comes to Avoiding Office Actions, An Ounce of Prevention is Worth a Pound of Cure
Clearly, office actions are not very beneficial. They take a lot of time. Months go by and every office action costs a few thousand dollars – $2000, $3000, or $4000. The exact amount does not matter.
What does matter is that the running costs keep rising, and still you are not getting your patent until you finally get the examiner to allow the claims.
The key to avoiding this cycle of office actions and delays that ultimately suck value from your patent is to craft a Litigation Quality Patent right from the start. You can learn more here about how our Litigation Quality Patents are different and position inventors to get their patents through the USPTO quicker, easier, and with significantly lower instances of prompting office actions on the public record.
Most patents get rejected at least once. What is going on?