Legal Definitions - advisory office action

An advisory office action is a formal communication issued by a government agency, such as a patent or trademark office, to an applicant. This type of communication typically occurs after the applicant has already received and responded to a "final office action." Unlike a regular office action, an advisory office action does not reopen the examination of the application or provide a new period for the applicant to respond as a matter of right. Instead, it serves to inform the applicant about the examiner's current view of their response to the final office action, often indicating that the response was not entirely persuasive or that the application is still not in condition for approval.

Here are some examples illustrating an advisory office action:

• Patent Application Scenario: Imagine an inventor has applied for a patent for a new type of drone. The patent examiner issues a "final office action," rejecting some of the patent claims because they are too similar to existing patents. The inventor then submits a response, amending their claims and providing arguments explaining why their invention is unique. After reviewing this response, the examiner issues an advisory office action. This communication informs the inventor that while some minor issues were addressed, the core rejections based on prior art still stand, and the application is not yet ready for allowance. This advises the inventor that their response was insufficient without giving them another opportunity to respond without further action like an appeal or a request for continued examination.

• Trademark Application Scenario: A small business applies to register a new brand name for its line of organic snacks. The trademark examiner issues a "final office action," refusing registration because the proposed name is too similar to an already registered trademark for a related food product, creating a likelihood of confusion. The business then submits a detailed argument, along with evidence, attempting to show that consumers would not be confused. The examiner reviews this submission and issues an advisory office action, stating that the arguments and evidence were not persuasive enough to overcome the initial refusal. This advises the business that their attempt to resolve the final refusal was unsuccessful, and the refusal remains.

• Design Patent Scenario: A furniture designer submits an application for a design patent for a unique chair. The examiner issues a "final office action," rejecting the design because it's deemed obvious in light of existing furniture designs. The designer responds by submitting new drawings highlighting specific, non-obvious features and arguments about the aesthetic distinctiveness of their design. The examiner reviews these materials and then issues an advisory office action, indicating that while the new drawings clarified some aspects, the design still lacks the necessary novelty to overcome the final rejection. This communication informs the designer of the examiner's continued position without reopening the examination process.