What is a First Office Action?
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What is a First Office Action? Video Transcript
In this section, I am going to talk about how one responds to a First Office Action. When you get a First Office Action, it mean it is the first substantive response from the patent office saying your claims are not allowable because of these reasons. It is the first thing after filing your patent application that you should receive that looks at the merits of whether you should be getting a patent or not. The first thing you do is look at the mailing date. The mailing date of the office action is very important. For a First Office Action you need to respond within three months if you do not want to pay any extra fees, and up to a total of six months from that mailing date if you want to pay extra fees. So within three months, ideally you are responding to that office action. What you want to make sure of when you respond that office action is that you address each and every point that the examiner brings up. If the examiner says something you do not agree with, you had better say it in your response. You are filing a response to the office action and you do not want be silent about things the examiner saying and address each and every one of their concerns. The ideal goal is to look the independent claims and what is rejected against the independent claims. Sometimes you can argue why your claim should be allowable over the independent claims and if you do that, the Patent Office will agree that your dependent claims are narrower than the independent claims and therefore you may or may not need to argue the dependent claims separately. The goal is to look at what is being cited against your independent claims and argue that primarily. You should review the references cited against you, particularly the prior art references going to these independent claims. Read them entirely. Compare them in their entire form to your claims and try to find where those prior art references do not disclose something that you are claiming. In the response to the office action you need to make very clear remarks sections where you address each of the things that you believe are in your claims that are not disclosed by the entire disclosure of the prior art. So you are comparing your application's claims versus the entire disclosure of the prior art cited against you. So that is what you do at the time of getting your First Office Action.