An Office Action is an official letter from the United States Patent and Trademark Office (USPTO) that represents a patent examiner’s review of the status of a pending patent action. During the patent prosecution process, an office action is a letter that is sanctioned by the patent examiner to point out areas of issues, improvements, or doubt within any patent application at the time of its review. It clearly states that the areas must need to be modified for its correctness or consistency by the patent applicant and must be submitted once all the modifications are done. In response or reply to the notice, the patent applicant is asked to answer back to the patent office with either amendments to the listed issues or list of references or proof that can validate the correctness of the parts. Office actions can be classified into two major categories, namely Final office actions and non-final office actions. In this article we will understand the two categories in details and portray final vs non-final office action through Table 1.
Non-Final Office Action
All the office actions which are not marked as the final office actions, are the non-final office actions. They are generally the first office actions issued for a patent application. Office actions which are filed at the initial stages of patent prosecution, includes mostly the examiner’s opinion about the claims and specifications of the pending patent application. If there are issues with the basic pre-requisites that defines patentability of the application, then these are also mentioned.
It can thought as when the class teacher reviews the work of his new student for the very first or initial time. Once a non-final office action is filed from the examiner’s side, it is the duty of the patent applicant to go through the whole review and analyze his/her mistakes to resolve them. The applicant can respond to non-final office action the application in any of the two ways (or both ways, if applicable). The applicant can either argues that the issues raised by the patent examiner are invalid and present some helpful resources to prove his/her words. Or, in the other case, the applicant has the option to amend the claims to overcome the examiner’s rejections.
For amending the claims no additional fees is required to be paid at the patent office in case of replying for a non-final office action. For sending a response to the non-final action, the applicant is required to submit the response stating, ‘An Amendment/Reply to an Office Action under 37 CFR 1.111’.
Final Office Action
The office actions which are filed by the patent examiner when the non-final office action responses become incapable or inappropriate to meet/satisfy their expectations, and still there are some flaws left behind in the application. They are typically second office actions, which may include issues/rejections in amendments made in the first/ non-final office action responses, or some new rejections in the patent application.
Sending response to final office action incurs extra cost (if claims are to be amended) to be deposited at the patent office for further patent examination. In other case, if the claims remain same as specified before, the If the applicant is required to submit the response stating, ‘A Reply to an Office Action under 37 CFR 1.116.’
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Final Vs Non-Final Office Action
Both the office actions enclose rejections from the patent examiner’s side, one way or the other. The difference lies in sending back the responses for the two, as shown in Table 1. There are three major differences between responding to a non-final office action and a final office.
Table 1. Final Vs Non-Final Office Action
| Non-Final Office Action | Final Office Action |
| Issued at initial (for the first time) stages of patent prosecution process to raise mistakes. |
Issued when the applicant’s office action responses fails to address or overcome all mistakes. |
| RCE (amendment under 37 CFR 1.114) appeal has to be filed for making amendments in the claims. | Only need to file direct response to examining attorney. |
| An appeal to the Trademark Trial and Appeal Board (TTAB) must be timely filed. | Only need to file direct response to examining attorney. |
| Additional fees have to be paid for filing an amendment under 37 CFR 1.114 | No additional fee has to be paid. |