Office Action Response 

Filing a patent application with care and precision does not grant you a patent. After the application is sent to the examiner, if they find out about specific prior arts and raise technical or formal objections in the application, it will get rejected. The applicant has to respond to the objections raised by the office action response either by making some amendments to the claims or by convincing the examiner through arguments, called an office action response, or OA response. Office Action Response includes technical and formal aspects and is drafted in a specific format. 

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What is a patent office action?

A patent office action is a letter from the U.S. Patent and Trademark Office (USPTO). It lets you know if your patent application will be granted or denied, and it may also ask you to submit more information.

If you do not respond within 6 months of receiving a notice of allowance, your application will be abandoned and cannot be revived unless it was filed under an earlier version of the law (before September 16th, 2012).

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Purpose of drafting an Office Action Response

Office Action Response is an integral part of patent prosecution, and it enables you to respond to the examiner’s objections to the patent application by convincingly modifying or amending the patent claims. Moreover, if the drafting of the office action response is poor, it can ruin an applicant’s innovation’s protective rights. Therefore, office action has to be drafted with the utmost care, based on which the examiner either grants a patent or rejects your application at the forefront. 

The office action could be a non-final office action response USPTO, which is a first evaluation of the patent application, or a final office action response when the examiner has reviewed the non-final office action response USPTO. The international search report is sent out when an international PCT application is filed. Responding to these reports speeds up the PCT application process.

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Issues in the office action

When you receive an office action, it’s important to read it thoroughly and understand all of the issues in the examiner’s rejection.

List all claims that are rejected

The examiner may reject all or some of your claims for many reasons. Common reasons include lack of novelty, obviousness, or fraud on the part of a third party (e.g., stealing someone else’s idea). If you disagree with any rejections, be sure to address them in your response by explaining why each claim should not be rejected under one or more sections listed below.

List grounds for rejection

A “ground” is one reason why an examiner believes that a patent cannot be granted based on current law or precedent set by previous decisions by courts or PTO administrative bodies like Inter Partes Review Board (IPR) proceedings conducted at USPTO headquarters located in Alexandria Virginia 22304-1400 USA. 

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Responding to a Non-Final Office Action USPTO

Responding to a non-final office action response USPTO requires you to respond to every requirement of the office action. You can do this in one of three ways:

Reply, Formal amendment, or Informal amendment.

It’s important to respond to all the requirements of the USPTO, or your patent may not be granted.

In a response to a final office action, you must include all the changes that you want to be made. It’s important to respond to all the requirements of the USPTO, or your patent may not be granted.

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Process of drafting an office action response

A final office action is a response to the patent application that you filed. There are only a few options for responding to a final office action response:

Response to the final office action within 2 months

Response to the final office action within 2 months if you want to change your claims or add more information about your invention.

Prepare a template 

To begin drafting an office action response, a template is followed to keep things accurate, fast, and efficient. The supporting points for drafting the arguments are taken from the objections raised by citing the references and the claims. To meet the needs of the patent office, the claims are amended to support the arguments made in response to the office’s action, whenever required.

Analyzing technical aspects of patent applications 

The analysis of the technical aspects is followed by a list of the objections raised by the examiner, and then each objection is solved one by one in a specific order to save time. The standard process is to conduct claim charting to compare the elements that the application is claiming against the cited references.

Identifying the differences between the cited references and claims 

Identifying the differences between the cited references and the claims and drafting the arguments based on them, overcoming the rejections, or analyzing how the claims or description can be amended so that the objections are answered but do not change the invention’s main aim or focus.

Along with the cited prior art, novelty, obviousness, and other patent law restrictions are checked, thus trying to convince the examiner through the arguments that it is a novel invention.

Providing suggestions or strategies to file for OA response 

Finally, drafting is completed by confirming the technical analysis, claims, amendments, and arguments. The OA response is scrutinized to see whether it complies with all the requirements prescribed by the patent office. 

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Conclusion

The USPTO is an essential part of the patenting process, and it’s important to follow their instructions carefully. If you fail to respond or do not address all the issues in the office action, your application may be withdrawn by the examiner or denied by the Board of Patent Appeals and Interferences (BPAI). The best thing you can do if faced with an office action is to contact an experienced patent attorney who knows how to deal with these types of situations so that they can help guide you through this difficult time. 

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Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.

Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).

Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.

Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.

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