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Last updated: September 28, 2026.
An Office Action can point to U.S. patents, published applications, foreign patent documents, and non-patent literature. The first task is document identification, not a conclusion about patentability. This guide explains how to turn the cited-reference list into an auditable collection task.
Start with the citation list
Look for the examiner citation list, often Form PTO-892, and note the application number, reference number, country, document number, publication or issue date, and any claim or passage mentioned in the action. MPEP §707 says that first-time examiner citations should be placed on PTO-892 and that the action should identify the relevant citation data. Read the body of the Office Action as well: the list alone does not explain which claims or passages the examiner relied on.
Separate three document groups
Treat these as different collection tasks:
- **U.S. patents and U.S. application publications:** identify the inventor or applicant, number, and issue or publication date. The USPTO does not normally send copies of these with the Office Action, so retrieve the public document separately.
- **Foreign patents and published applications:** record the issuing country or office, document number, kind code, and publication date. MPEP §707 explains that copies of cited foreign patent documents are generally furnished with the action, subject to the stated exceptions, but you should still check the actual file.
- **Non-patent literature:** record author, title, publisher or venue, date, pages, DOI or stable link when available, and the exact portion that caused it to be cited. DownloadPatent can preserve an NPL reference list, but it does not download NPL full text.
For every item, keep the original citation and the file you actually obtained side by side. An English family publication, machine translation, abstract, or rebuilt text PDF can be a review aid, but it is not automatically the cited reference.
Find the original patent PDF
For a known US number, use USPTO Patent Public Search and compare the document page with the PTO-892 entry. For EP documents, use Espacenet or the EPO Publication Server. For other offices, follow the official source in the foreign-document PDF guide. Do not treat a search-result record as a successful PDF retrieval.
When the Office Action itself provides a foreign reference or NPL copy, preserve that supplied file and note it in the case record. When you retrieve a replacement copy, compare its number, date, title, and kind code. If no original file is available, leave the item as an exception rather than quietly switching to a family member.
Use DownloadPatent for the collection step
For a supported OA or search-report PDF, OA citations can extract patent and NPL citation metadata so you can review each item. The IDS preparation guide covers original, family, translation, and NPL attachment distinctions. For a known set of patent numbers, patent downloads and coverage help with the selected PDF package.
DownloadPatent does not interpret claim validity, decide materiality, select the documents that must be disclosed, prepare a legal certification, or file an IDS. Those decisions remain with the responsible prosecution team under the current USPTO rules and case record.
Frequently asked questions
Is every reference in an Office Action a U.S. patent?
No. A notice can include U.S. patents, U.S. application publications, foreign patent documents, and NPL. The identifiers and copy expectations differ by category.
Does the Office Action always contain the full cited PDF?
No. MPEP §707 explains that U.S. patents and U.S. application publications are not normally supplied as paper copies, while foreign and NPL copies have different rules and exceptions. Check the actual action and file wrapper.
Is collecting the cited PDFs the same as filing an IDS?
No. Collection, timing, the list, copies, statements, fees, review, and Patent Center submission are separate steps. Use the collected files as review material and have the responsible team apply the current rule.
Does DownloadPatent download NPL full text?
No. It can show or preserve NPL citation metadata in the OA workflow, but NPL full text remains a separate acquisition and rights question.
DownloadPatent artifact policy
Google machine translations are external links only: open them on Google Patents; they cannot be selected or included in a download. DownloadPatent does not generate or download rebuilt text PDFs or DOCX files. An English family publication is a separate document from the cited original.