Office action
Encyclopedia
An office action is a document written by an examiner in a patent
or trademark examination procedure and mailed to an applicant for a patent
or trademark
. The expression is used in many jurisdictions.
, an office action is issued by an examiner
for the United States Patent and Trademark Office
(USPTO), rejecting an application to register a trademark. An office action typically includes one or both of two elements. The first possible element is the category of "informalities", matters such as an inadequate sample to show use of the mark, providing insufficient information with respect to the nature of the entity seeking the mark (for example, failing to name the partners in a partnership), or providing insufficient information for the examiner to determine what, exactly, the goods and services provided by the applicant are.
The second possible element of an office action is an actual basis for rejection of the mark itself. The most frequent bases are likelihood of confusion with an existing registered mark and genericness or descriptiveness of the mark for which registration is sought. Rarely, a mark will be rejected as "immoral or scandalous", usually if it contains sexually suggestive terms, or vulgarities.
When an Office Action is issued, the applicant has six months to respond to the Examiner. If the Office Action was issued with respect to "informalities", the response may simply be the correction of these matters by providing additional information. If the action is premised on a defect in the mark itself, such as likelihood of confusion, genericness, or descriptiveness, the applicant may need to present evidence and legal argument to overcome this rejection. If the Examiner is not convinced by the evidence submitted, a Final Office Action will issue. This may be appealed to the Trademark Trial and Appeal Board
. A final office action is also known as a filing refusal.
, an office action is a document written by a patent examiner in response to a patent application
after the examiner has examined the application. The office action cites prior art
and gives reasons why the examiner has allowed, or approved, the applicant's claim
s, and/or rejected the claims.
An office action may be "final" or "non-final". In a non-final office action, the applicant is entitled to reply and request reconsideration or further examination, with or without making an amendment. In a final office action, the applicant has two options for reply. In the first option, the applicant may appeal rejection of claims to the Board of Patent Appeals and Interferences
. Otherwise, the applicant may file an amendment which complies with the requirements set forth in the office action. Reply to a final rejection must include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection must comply with any requirements or objections as to form. Replies to final office actions must be in accordance with 37 C.F.R. 1.113-1.114.
FAOM is an acronym used by the USPTO for "first action on merits".
Patent prosecution
Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent...
or trademark examination procedure and mailed to an applicant for a patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
or trademark
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
. The expression is used in many jurisdictions.
Trademark law
In United States trademark lawUnited States trademark law
Trademarks were traditionally protected in the United States only under State common law, growing out of the tort of unfair competition. As early as 1791, Thomas Jefferson proposed that the marks of sailcloth makers could be protected under the Commerce Clause, but it was not until 1870 that...
, an office action is issued by an examiner
Trademark examiner
A trademark examiner is an attorney employed by a government entity such as the United States Patent and Trademark Office to determine whether an applicant should be permitted to receive a trademark registration, thus affording legal protection to the applicant's trademark...
for the United States Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
(USPTO), rejecting an application to register a trademark. An office action typically includes one or both of two elements. The first possible element is the category of "informalities", matters such as an inadequate sample to show use of the mark, providing insufficient information with respect to the nature of the entity seeking the mark (for example, failing to name the partners in a partnership), or providing insufficient information for the examiner to determine what, exactly, the goods and services provided by the applicant are.
The second possible element of an office action is an actual basis for rejection of the mark itself. The most frequent bases are likelihood of confusion with an existing registered mark and genericness or descriptiveness of the mark for which registration is sought. Rarely, a mark will be rejected as "immoral or scandalous", usually if it contains sexually suggestive terms, or vulgarities.
When an Office Action is issued, the applicant has six months to respond to the Examiner. If the Office Action was issued with respect to "informalities", the response may simply be the correction of these matters by providing additional information. If the action is premised on a defect in the mark itself, such as likelihood of confusion, genericness, or descriptiveness, the applicant may need to present evidence and legal argument to overcome this rejection. If the Examiner is not convinced by the evidence submitted, a Final Office Action will issue. This may be appealed to the Trademark Trial and Appeal Board
Trademark Trial and Appeal Board
The Trademark Trial and Appeal Board is a body within the United States Patent and Trademark Office responsible for hearing and deciding certain kinds of cases involving trademarks. These include appeals from decisions by USPTO Examiners denying registration of marks, and opposition proceedings...
. A final office action is also known as a filing refusal.
Patent law
In United States patent lawUnited States patent law
United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...
, an office action is a document written by a patent examiner in response to a patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
after the examiner has examined the application. The office action cites prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
and gives reasons why the examiner has allowed, or approved, the applicant's claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
s, and/or rejected the claims.
An office action may be "final" or "non-final". In a non-final office action, the applicant is entitled to reply and request reconsideration or further examination, with or without making an amendment. In a final office action, the applicant has two options for reply. In the first option, the applicant may appeal rejection of claims to the Board of Patent Appeals and Interferences
Board of Patent Appeals and Interferences
The Board of Patent Appeals and Interferences is an administrative law body of the United States Patent and Trademark Office , which decides issues of patentability. The Chief Administrative Patent Judge is James Donald Smith.-Structure:...
. Otherwise, the applicant may file an amendment which complies with the requirements set forth in the office action. Reply to a final rejection must include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection must comply with any requirements or objections as to form. Replies to final office actions must be in accordance with 37 C.F.R. 1.113-1.114.
FAOM is an acronym used by the USPTO for "first action on merits".