How To Respond To USPTO Office Actions During Patent Filing

November 4, 2022

You may have adhered to all guidelines and taken care to ensure adherence to rules while filing your patent application. But all the meticulous planning does not guarantee a patent grant immediately.

The examination stage is strict and even the most perfectly drafted applications never make it through without the issuance of an office action (OA). The United States Patent and Trademark Office (USPTO) may issue one or more office actions depending on the findings of the examiner.

Here we explore the various standard ways to respond to an OA and how they fare when against a continuation-in-part (CIP) patent specification as an alternative response strategy.

What is an Office Action?

An Office action is an official letter containing correspondence from the patent examiner identifying deficiencies in the patent application. It mandates a written response from the applicant for the application examination to continue. Restriction requirement, non-final office action, and final office action are the types of office actions one may receive.

Restriction Requirement: If the claims in the application are directed at more than one invention, then the examiner may raise an Office action.

Non-Final Office Action: It is raised the first time and allows you to make amends to your claims without introducing new matter. If the examiner is satisfied with the reply the application proceeds to the next stage.
Final Office Action: If the response to a non-final Office action is not deemed sufficient by the examiner or is perceived to raise new questions then they may raise a final Office action to rectify the issue.

When replying to an office action, each of the grounds of rejection must be addressed. The responses are due within six months of the mailing date. The USPTO makes provision for a shortened period within which one can send the response without having to pay any extension fee. Depending on the type of office action, this period is usually 2-3 months.

An application is considered abandoned, and no further action is taken on it if the applicant fails to submit a response.

Issues Raised by Office Actions

Since the chief focus of patent applications are the claims, office actions are mostly issued if the examiner finds problems therein. Proof of the existence of prior art, non-obviousness of invention, and failure to fulfill the legal requirements are some of the issues that may be raised. Each rejection in an office action is accompanied by the examiner’s detailed reasoning for the step.

Responses to Office Actions

The following options are available to you when deciding on the best response to an office action. They may be used in conjunction or independently depending on the requirement of your case.

Examiner Interview
Speaking directly to the patent examiner is highly recommended as sometimes the written word gets lost in translation; especially when it comes to the subjective language of claims which is open to interpretation. A conversation will make it easier to understand the objection as well as put forth your point. Prior to scheduling a meeting, be prepared with the doubts and arguments that you need to put forth.
Written Reply
A written reply is required regardless of whether you do or do not take an examiner interview. When drafting your response, be mindful of the problems pointed out by the examiner and reply to each one meticulously. Your response must be a balance of amends and arguments supporting your claims.

Responses like requesting a new examiner or asking for the examiner’s supervisor are available to the applicant but must be avoided as they are not taken seriously and may hamper your relationship with the examiner.

Special Responses to Final Office Action

The above responses apply mostly to a non-final Office Action. They are useful in the case of final Office Action if the claims require minor doable corrections. For responding to final office actions consider the following ways:

Request for Continued Examination (RCE)
An RCE is available only after the issuance of a final office action and involves payment of a fee to continue the prosecution of the application. In case the examiner is not content with the amends, filing a non-final office action is the only recourse available to them.
Continuation Application
To file a continuation application the parent application must still be pending. While it does not allow you to introduce new matter, you can incorporate claims that are distinct from the main application. A continued application relies on the same written description and illustrations as the parent application. It receives the benefit of the filing date of the main application as well.
Continuation-in-Part Application
A continuation-in-part application or CIP claims priority to the parent application as well as introduces new matter in the application. This is done at the cost of losing the right to claim the effective filing date for the newly presented matter. If you need to add a new matter to the application that was not disclosed in the previous one you can opt for a CIP patent specification instead of filing a new patent application.
Divisional Application
When responding to restriction claims, the applicant may resort to a divisional application to prosecute the withdrawn claim set. Such applications also reserve the benefit of the filing date of the parent application.
Appeal
If an applicant has received a claim rejection twice, they can file for an appeal with the USPTO Patent Trial and Appeal Board. Appeals are an expensive and time-consuming affair only viable for high-value patents.

Why CIPs Are A Smart Response To Office Action

Some patent applications see office action due to inadequately furnished specifications on part of the applicant. In such cases, filing a response will not answer the problem due to a lack of material in the specifications. This is where CIP steps in by allowing you to introduce new matter as well as substantiate the claims effectively. The CIP patent specification is a potent tool to use when your application lacks substance and is prone to further rejections.

However, CIPs must not be used in cases where the applicant has nothing new to add. Also, keep in mind that filing a CIP will delay the filing date for the new claims.

Conclusion

Ultimately only a legal expert with due knowledge of office action responses can help you with the right method to remedy the situation. All aspects of the problem must be considered before deciding on the strategy to address an office action effectively.

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