Office action

Cross-referenced

Basis for rejection

The specific legal grounds a patent examiner cites when refusing to allow a claim. Common bases include lack of novelty (35 USC § 102), obviousness (35 USC § 103), failure to fully describe the invention (35 USC § 112), and unpatentable subject matter (35 USC § 101). An office action will state the basis for each rejection, and applicants must address each one in their response.

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Examiner

A USPTO employee trained in a specific technical field who reviews patent applications for compliance with patent law. Examiners search prior art, write office actions rejecting or allowing claims, and conduct interviews with applicants or their attorneys. The examiner assigned to your application has significant discretion in how they interpret your claims and apply prior art.

Cross-referenced

Patent

A government-granted right that gives an inventor the exclusive right to prevent others from making, using, selling, or importing a patented invention within the country that granted the patent, for a limited time. A patent does not give the owner the right to practice the invention — only the right to exclude others. The US issues three types: utility, design, and plant patents.

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Response

A written reply from a patent applicant to an office action. A response must address every rejection and objection raised by the examiner — arguing why the rejection is wrong, amending the claims to overcome the rejection, or both. Failing to respond within the deadline causes the application to go abandoned. A well-crafted response is often the difference between getting a patent and getting a final rejection.

On-sale bar

A rule that you cannot patent an invention that was on sale, or offered for sale, more than one year before filing. Together with prior public use and publication it forms the statutory bar that can destroy novelty under 35 U.S.C. 102.

Obviousness

A grounds for rejection under 35 USC § 103 when an invention, while not identical to any single prior art reference, would have been obvious to a person having ordinary skill in the art at the time of invention. Examiners frequently combine two or more prior art references to make an obviousness rejection. It is the single most common rejection in patent prosecution.