If you have received a second office action, you need to know what the examiner's decision will be after responding to the second notification. Knowing these allows you to exercise different levels of caution in your response and avoid a rash response that could lead to a direct rejection of your patent application.
Since the first examination was carried out previously, the second office action notification generally deals with the issue of inventive step.
According to the principle of hearing, the applicant has at least one opportunity to reply. After receiving the reply to the first office action, the examiner may reject the patent application if he or she believes that the response document has not overcome the defects pointed out in the first office action or that the applicant's reasoning is insufficient.
Since the examiner has issued a second notice of refusal, it means that the examiner believes that there is room for maneuver or amendment in the application document and gives him a chance to reply again.
If it was 10 years ago, it was not uncommon for the examiner to issue a third or fourth notification, and even a fifth notification.
As far as the overall situation is concerned, for the sake of efficiency, many invention patent applications have been subject to the substantive examination process after the second reply. A notice of grant or refusal is issued if, after two substantive and comprehensive examinations, the examiner still believes that the technical solution in the patent can be obtained through the combination of prior art (i.e., there is no inventive step) and that there is no need to proceed with the examination.
Therefore, the reply to the second notification is crucial.
After the submission of the reply to the second office action, the examiner will take the following actions:
(1) Grant of patent rights
This is, of course, a welcome result.
After the second notification is answered, if the response document has overcome all the problems pointed out by the examiner, and the examiner has not carried out further search and examination, the examiner will accept your reply and make a decision to grant the patent. Next, you will need to pay the registration fee (annual fee) within the time limit specified in the Notice of Grant and wait to receive the patent certificate.
(2) The applicant is required to submit an amendment to grant the patent
This result is also positive, meaning that the patent application will be granted.
If, after the submission of the reply to the second notification, although the overall problem is not large, there are still some minor problems;Or the examiner considers that the scope of protection is too large and that the scope of the claims needs to be narrowed. For the sake of efficiency, the examiner may not issue another notice, but will call you, point out the specific problem, or negotiate the scope of protection, and ask you to submit the supplementary documents. After the examiner receives the voluntary amendment, a letter of authorization is issued if the problem has been overcome.
(3) The examiner conducts a further search and issues a notice of third refusal
Isn't it annoying?Do examiners have to kill patent applications?
It is important to understand that it is also the responsibility of the examiner to broaden the scope of the search and make a more comprehensive examination.
If the examiner conducts further examination, it means that the examiner has accepted the response to the second office action. However, before the grant, the examiner changed the search idea or changed some search keywords and tried a new search to determine whether the conditions for grant were really met.
If a new relevant prior art document is retrieved and it is considered that the document can destroy the inventive step of the application, the examiner will issue a third office action.
On the other hand, if the application can still be granted after the reply to the third notification, it shows that the stability of the patent application is also high and the value is greater. Even if someone files a request for invalidation after granting, the patent is not so easily invalidated.
(4) Make a decision of rejection
This result is not good, it is a result that you don't want to see.
The examiner did not accept the reply plan of the second pass, insisted on the negative examination opinion in the second pass, and then made a decision of rejection.
After a patent has been refused, if you are not satisfied with the decision of the Patent Office and believe that the examiner's decision is incorrect, you need to file a request for patent reexamination within three months from the date of receipt of the notification.
Is there a need for a review?A final decision can only be made after a re-analysis and review of the entire set of examination documents according to the importance of the patent application.
The above is a list of several opinions that may be formed by the examiner after filing the response document to the second office action. Understanding these has given a certain reference value to an effective reply to the notice.
Related Reading:
How to achieve 1 month authorization for invention patent application?
Several apparent characteristics of low-quality patent applications.
Encyclopedia of Patent Examination Status Terminology (with ** Explanation).