November 17, 2021

Winning Strategies For Responding To an Office Action

If you’re reading this, you’ve most likely just received a correspondence from the Patent and Trademark Office informing you that your patent application has been issued an ‘office action’. Now you’re trying to figure out what exactly an office action is, what you need to do to respond to it and who is the best person to respond to an office action. Stay here: we’ll cover all these questions and more, including how you can create an effective strategy to overcome the rejections and objections. Let’s start with explaining what an office action is!

An Office Action (OA) is an official document delivered to a patent applicant by a patent examiner following a comprehensive examination of a patent application. It usually comprises objections and rejections to the application’s specification, claims, and drawings. For software patent applications, the rejection may also be in regard to the application being Abstract. To counter these rejections or objections, the applicant must create and file a response within the time limit, including all relevant reasons and modifications.

It is critical to develop an effective plan before drafting an Office Action response to guarantee that the response is accepted and the application is granted. Everything connected to the preparation of such a plan is covered in the following article.

Drafting an Office Action Response

A patent applicant must perform the following steps while drafting response:

Usual Approach for developing a Strategy:

Strategy development is an important aspect of drafting an OA response as mentioned above in steps. The usual approach for developing a strategy is as follows:

While analyzing the Office Action, a patent drafter only reads the mapping of claims from the cited prior-art references.
If the drafter notices a discrepancy between the claimed feature’s mapping and the cited prior-art references, he/she treats the discrepancy as a matter of argument and develops the answer accordingly.
If the claims are mapped appropriately, the drafter searches the specification for additional subject matter and adds it to the claim set, and significantly narrows down the scope of the claims.

Consequences of Using the usual Approach for Strategy development:

Some of the repercussions of using standard approach are as follows:

The patent application gets rejected again. Thus, the applicant is responsible for the expense of submitting the next office action response.
The patent applications scope gets so specific, which might not be the objective of the inventor/applicant. Patent loses its value.

From the consequences mentioned above, it is clear that there is a need of preparing a correct strategy before drafting an Office action response.

How to develop the right strategy for drafting an office action response?

Consider the track record (number of cases approved, grant rate, difficulty percentile, interview benefits etc.) of your assigned examiner.
Check the rejections and the dates of prior-art references. The date criteria are used to see if prior-art references are disclosed before the subject patent application’s effective filing date. We don’t need to look at prior-art references if the date criteria aren’t met.
Modify the claims if required to overcome the rejections
Determine the most important features of the patent application from the claims and the specification. Thoroughly read the Office action as well as the cited prior-art references to see if the references reveal the subject invention’s claim elements. If yes, then try to find one or more (significant) differences between the claim elements and prior art and list them in the Arguments.
Use online public sources like USPTO Public Pair, Espacenet, and Global Dossier to look up the whole prosecution history. Analyze which aspects have already been presented in the previous response so you don’t end up debating about a feature that’s already been discussed in earlier OA responses.

By following the steps outlined above, you can develop a solid approach that will help you increase your chances of acquiring a patent.

Who is the best person to respond to an office action?

A person responding to an office action should be familiar with techno legal language because they will be modifying a portion of the disputed claim elements or arguing against the patent examiner’s objections. The response must be rational and analytical in nature, to interpret and dismiss the objection expressed in the office action widely.

The best person to respond to an office action is the patent drafter or the patent consultant who has a thorough knowledge of the invention and the patent law. The Wissen research office action service is meant to assist clients in overturning patent examiner rejections or objections. Our firm has a lot of expertise dealing with rejections and objections.

Wissen Research has successfully responded to more than 100 office actions in USPTO.

Author

Anamika Manhas