Respond to an Action on the Merits

After you have filed your Patent Application and you have responded to any Notice, and have dealt with any Restriction, you will, soon after responding to the restriction (if applied), receive a first action on the merits. An action on the merits is an Office Letter that indicates the Official Search has been done, and the action will tell you if any claims are allowed, or would be allowed if amended, and which if any claims are rejected. Depending on the search and the examiner’s opinion all the claims may be allowed, one or more may be allowed and others rejected, some claims may be indicated as allowable if amended in a certain way, and all claims may be rejected.

In a Detailed Action section specific objections and rejections, if any, are stated. The action is all about the claims, and the examiner is tasked with considering and dealing with each claim individually, although an objection or rejection may be applied to a group of claims.

The process of analyzing an Action, the references cited and applied, and preparing a formal response is rather complicated, because the nature and details of actions may vary widely. Having had years of experience, we have prepared for your guidance, a step-by-step process that, if followed, should be of a great deal of help to you.