FIRST OFFICE ACTION
The first formal correspondence in
the process to get a patent from the US
Patent Office concerning the patentability of
the invention is in the form of a first “office
action,” which is mailed to the applicant’s patent
agent or attorney. This first step in the process to
get a patent is generally received about fifteen
months after the application was filed, although
the actual time can vary considerably
depending upon the technical field of
the invention.

APPLICANT’S RESPONSE
In responding to the first office action of
the process to get a patent, the applicant’s
patent prosecutor will draft an amendment and
response. In this step of the process to get a patent the
patent prosecutor will request reconsideration and will
specifically address the perceived errors in the examiner’s
office action. Frequently, the response will include an
amendment to the claims in order to clarify the invention
and to overcome the prior art cited in the first office
action. In addition to the amendment, the response
may contain arguments as to how the amended
claims are patentable in view of the prior
art references cited or the
objections made.

RESPONSES
Responses in the process to get a patent
must be made before a prescribed deadline.
Typically, the deadline is set three months after the
office action was mailed, and can be extended one
month at a time up to six months. Each one month
extension requires the payment of an additional fee. If no
reply to the office action is received before the six month
deadline, the application is considered abandoned. However,
if it can be shown that the failure to prosecute the
application was unavoidable or unintentional, the
application may be revived by the Commissioner. The
revival requires a petition to the Commissioner,
and a fee for the petition, which should
be filed without delay.

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