Office action (OA)

At the USPTO, the examiner searches the prior art and reviews the application to determine whether the claims define a useful, novel, nonobvious and enabled invention that has been clearly described². If the invention is not considered patentable as claimed, the claims are rejected (37 CFR 1.104(c)(1))².

• Rejections over prior art. The claimed subject matter is either not novel under 35 U.S.C. 102 or obvious under 35 U.S.C. 103². The examiner must cite the best references available, designate the part relied on, explain its pertinence if not apparent, and specify each rejected claim (37 CFR 1.104(c)(2))².
• Objections and requirements. Not every issue is a rejection of a claim. The rules distinguish rejections from objections or requirements not involved in the rejection of any claim².
• Restriction requirements. The USPTO lists a restriction requirement as one kind of Office action¹.

See novelty, obviousness (inventive step at the EPO) and prior art for the substance of the most common rejections.

A second or any subsequent action on the merits is final, except where the examiner introduces a new ground of rejection that was neither necessitated by the applicant's amendment of the claims nor based on information submitted in an information disclosure statement filed within the period in 37 CFR 1.97(c) with the fee (MPEP 706.07(a))². In certain situations claims may be finally rejected in the first Office action. One example is a continuing application whose claims are all identical to, patentably indistinct from, or have unity of invention with the claims in the earlier application, and would have been properly finally rejected on the grounds and art of record in the next Office action in that application (MPEP 706.07(b))².

• Six months at most. By law, most replies to Office actions must be received within six months from the date the action was mailed¹. Unless the applicant is notified in writing that a reply is required in less than six months, a maximum period of six months is allowed (37 CFR 1.134)⁵.
• Shortened statutory period. The Director of the USPTO has directed examiners to set a shortened period for reply to every action. It is 3 months to reply to any Office action on the merits, and 2 months for a restriction requirement alone. A shortened period may not be less than 30 days (MPEP 710.02(b))⁴.
• How the period runs. Time is computed from the notification or mail date printed on the Office action to the date the Office receives the reply (MPEP 710.01(a))⁴.
• Extensions. An applicant may extend a shortened statutory period up to the earlier of the maximum period set by statute or five months after the period set for reply, by filing a petition for an extension of time and the required fee. No reply may be filed later than the maximum period set by statute (37 CFR 1.136(a))⁶.
• Final actions. Where a final action sets a 3-month shortened statutory period and the applicant files a first reply within 2 months of its date, the period expires 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later. In no event can the statutory period expire later than 6 months from the mailing date of the final rejection (MPEP 706.07(f))².
• If no reply is filed. If an applicant fails to reply within the time period provided under 37 CFR 1.134 and 1.136, the application will become abandoned unless an Office action indicates otherwise (37 CFR 1.135(a))⁴.

If examination reveals that the application or invention does not meet the requirements of the EPC, the Examining Division invites the applicant, as often as necessary, to file observations and, subject to Article 123(1), to amend the application (Article 94(3) EPC)³. In that communication it invites the applicant to correct deficiencies and amend the description, claims and drawings within a period to be specified, and the communication must contain a reasoned statement covering, where appropriate, all the grounds against grant (Rule 71(1) and (2))⁹.