“Office Actions…” what are they?

When a patent or trademark application is filed at the United States Patent and Trademark Office (the “USPTO“), the application will be assigned to an examining attorney (or “Examiner”) who will study the application to be sure that it complies with applicable statutes and rules and who also will assess the patentability of the invention or the registrability of the mark, as the case may be. If the Examiner responds with an “adverse action” or any objection or requirement, it will be explained in a written “Office Action.”

What to Expect After an Office Action:

After an Office Action is received, the applicant – usually via the applicant’s intellectual property attorney – will have an opportunity to respond to the Office Action (in some cases, taking up to 6 months to do so). Additional Office Actions and responses may follow. This written back-and-forth between the Examiner and the applicant can last for months or years, particularly if appeals are involved! In a sense, Office Actions and the applicant’s written responses to them are a “slow motion,” written conversation. And depending on the complexity of the “conversation,” it may take years for a United States Patent or a United States Trademark Registration to issue. The USPTO examination process simply is not an overnight matter.

The Prosecution Time Line – Hurry Up and Wait:

Despite what we now know about Office Actions and the examining process, you may still find peculiar commercials and internet sites that seem to suggest the possibility of getting “a patent or trademark in minutes!” Ridiculous. Even under accelerated examination (which entails additional government fees and costs), a patent application will not be assigned to an Examiner for months. Likewise, a trademark application won’t be reviewed by an Examiner for at least 12 weeks after filing. On that rare occasion in which an Examiner finds no reason to issue an Office Action containing an objection or rejection, the process will still require weeks before a patent or trademark registration issues. Patience is a virtue, especially when dealing with the USPTO, which is handling hundreds of thousands of applications each year…