An Office Action is something that the Patent Office may provide as a challenge to your patent application. In writing, the examiner raises formal issues such as the fact that the drawings need to be fixed, or that the specification needs amendment, or perhaps there are some spelling errors, or maybe there is a problem with how the claims relate to the final product.
Office Actions also raise any substantive issues regarding why the Patent Office does not believe your claims should be allowable. They may cite prior art against you and say that your invention cannot be patented because there is another invention that accomplishes exactly what you have set out to do, or that that there is a group of other inventions that render your invention obvious.
You should not despair if your claims are rejected in the first Office action since relatively few applications are allowed as originally filed. In most cases, Office Actions typically come anywhere from 12 months to four years after initially filing a patent application. Largely, this is dependent upon the art unit and how many patents are being filed in that particular art unit, and so more or less patent Office Actions are received on that basis. The number of Office Actions can range from two to four.
Once an Office Action has been issued, an applicant must respond in writing within the time limit prescribed, requesting reconsideration. In this reply, the applicant must specify and distinguish any possible errors in the examiner’s Office Action and is required to respond to all grounds for objection or rejection mentioned in the Office Action. Here, it is important to be as specific as possible – merely alleging that the examiner has made a mistake would not qualify as a proper justification for reconsideration. When amending your application in response to a rejection, it is important to clearly explain why the amendments you are making should make your claims patentable in light of the objections the Office Action leveled. Once submitted, the amendments will be reconsidered and the applicant is then notified as to whether the claims are deemed rejected or objected to or allowed in what is known as a Second Office Action. Subsequent Office Actions are usually final.
Once the examiner and the applicant agree that the claims justifiably overcome all challenges, the patent will be granted. Basically, Office Actions are merely the Patent Office’s challenges to the merits of an application before a patent is granted. Usually there are two or three of them. There is really nothing to worry about it if you get an Office Action. In most cases, if you have a professionally drafted or well drafted case, you will be able to overcome the Office Action challenges, as long as your fundamental invention is sound and there are distinctions that you can make between your invention and the closest thing that is cited against you.