OFFICE ACTIONoffice action. Patents. A patent examiner’s communication with a patent applicant, usu. to state the reasons for denying an application. See UNITED STATES PATENT AND TRADEMARK OFFICE . [Cases: Patents 108. C.J.S. Patents ¡ì¡ì 144, 148¨C151.]
advisory office action. An office action in which the patent examiner replies to an applicant’s response following final rejection of the application. ? An advisory action addresses the status of an amendment made in the applicant’s response to the final rejection, indicates the status of the claims for appeal, addresses an affidavit or exhibit, or responds to a request for reconsideration.
¡ª Also termed advisory action.
final office action. A patent examiner’s determination that an application is not allowable. ? The applicant may file a continuation application, appeal the decision, or request continued prosecution. Cf. first office action.
first office action. A patent examiner’s initial reply to a patent application. ? If the examiner’s first report is a rejection of all or most of the application’s claims, it is termed a shotgun rejection. To avoid abandoning the prosecution, the applicant must respond by answering the examiner’s reasons for rejection, amending the claims, or both. Cf. final office action.