Types of Office Actions
Receiving an Office Action (OA) is common. There are two main types:
- Procedural (Administrative): Use includes minor issues like disclaimer requirements, description amendments, or translation of foreign wording. These are usually easy to fix.
- Substantive: These are serious refusals, most commonly for "Likelihood of Confusion" (Section 2(d)) or "Merely Descriptive" (Section 2(e)(1)). These require legal arguments and evidence to overcome.
Critical Deadlines: 3 vs 6 Months
The USPTO has recently changed the response deadline for office actions. As of late 2022/2023, the deadline for most office actions is now 3 months, with an option to extend for another 3 months for a fee.
This "3-month shortened statutory period" catches many attorneys off guard. Missing this deadline results in abandonment. Docketing software must be updated to reflect this new rule.
Reporting to Clients
When an OA lands, prompt client communication is key. Your report should clearly state:
- The nature of the refusal.
- The likelihood of overcoming it (Realistic success rate).
- The estimated cost to draft specific arguments.
- The hard deadline for a response.
Automating the Process
Manually checking the TSDR status of every application weekly is inefficient. Modern docketing software like LexiDots connects directly to the USPTO API.
When an Office Action is issued, the system detects the change, calculates the 3-month deadline automatically, and alerts the attorney. This removes the risk of a "lost email" causing a missed deadline.