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Patent Prosecution and Office Action Response
Patent Prosecution And Office Action Response
Patent prosecution generally refers to the process of advancing a patent application towards grant and securing patent rights. The patent prosecution process starts with the filing of a patent application and entails patent office action response to communications received from patent offices.
In case the patent office has objections to the grant of the patent application, the patent office communicates the objections to the applicants and/or representatives of the applicants.
Patent prosecution service involves understanding the objections raised by the patent office, preparing a strategy to overcome the objections, and issuing an office action response to the patent office in writing.
Novelty, obviousness, and inventive step are common issues raised by the patent office. Patent prosecution specialists analyze the objections and documents cited by the patent office and prepare a written action response comprising amendments to claims and/or arguments to assert the patentability of the patent application.
We, at TT Consultants, have qualified & experienced patent agents & technical engineers with technical & legal knowledge to assist our clients in analyzing office actions received from patent offices and responding to office actions for advancing patent applications toward the grant.
Challenges Faced While Preparing for Patent Prosecution & Office Action Responses
Vague and incomplete response that leads to extended examinations
Amendments that may unnecessarily narrow the scope of protection
Unallowable amendments that are not supported by the original specification
Submitting details that may cause problems during enforcement and litigation
Time crunch to analyze objections and prepare response
Our Services
Office action response drafting
Response to OA/ER determines the direction of prosecution. Hence, it is important to carefully prepare the response. For preparing the response, we, at TTC, analyze the OA/ER and understand the viewpoint of the Examiner. Based on the cited documents, we prepare a strategy on whether to amend or provide arguments to overcome the objection/rejection.
While amending, care is being taken not to make amendments that may result in unnecessary narrowing of the claims.
We also deal with complying with Formal requirements of different jurisdictions which may have arisen in OA/ER. We assist in preparing responses to Non-Final Office Action, Final Office Action, First Examination Report, European Search Opinions, International Search Opinions, etc.
Devising multiple strategies for responding to objections
As the response to OA/ER decides the next course of patent prosecution, it is important to carefully reply to the objections/rejections raised in OA/ER. We assist clients in preparing multiple office action response strategies.
This provides multiple alternatives for clients to take decisions based on current and future business and legal scenarios. The client may select the most suitable strategy to move forward.
Drafting instruction letter to associates in various jurisdictions
Many clients file patent applications in different jurisdictions. They must respond to issued OA/ER individually for each jurisdiction to obtain a grant in that jurisdiction.
We assist clients in drafting instruction letters to foreign associates for preparing responses to patent applications in relevant jurisdictions.
Detailed claim chart preparation
We assist clients in preparing a claim chart indicating a thorough mapping of claimed features of the invention and relevant features of the cited documents.
This service helps clients clearly differentiate the features of the claimed invention and prepare the most suitable amendment and response strategy.
Oppositions and third-party observations
We help prepare responses to pre-grant and post-grant oppositions. We also assist clients in determining the closest prior arts for issuing notice of opposition.
We further provide our observations to clients, which help them decide a course of action in opposition proceedings.
Appeal briefs and reply briefs
We also assist in preparing pre-appeal briefs, appeal briefs, and reply briefs, particularly in US jurisdictions.
Our Methodology
Understand the objections/rejections in the OA/ER, analyze cited documents, and prepare one or more strategies to overcome the objections/rejections.
Develop understanding
In-depth analysis
Strategy building
Our Methodology
Initial discussions with clients to understand the desired scope of protection and any business directions
Establishing an in-depth understanding of the invention by engineers and patent agents
Detailed analysis of rejections and objections raised in the office action by the patent office
Preparing strategy document with multiple strategies (arguments and/or amendments) to overcome the rejections and objections raised in the office action
Preparing a draft response to the office action for filing
Multiple reviews of strategies and draft responses by patent agents & attorney
Why TT Consultants?
Frequent team training by US and EP attorneys.
Quick turnaround times to avoid extensions.
Flexible work model as per client/case requirements.
Expertise in responding to office actions in various jurisdictions – US, Europe, India, Israel, China, Japan, etc.
Quality assurance with multiple-level reviews by patent agents and patent attorneys.
Claim scope amendment keeping in mind monetization and competition.
TTC has an experienced patent prosecution team of patent attorneys, patent agents, Ex-USPTO examiners, subject matter experts, and engineers.
Expertise in responding to rejections in all kinds of domains – software, electronics, communication, mechanical, life sciences, etc.
Clients Testimonials
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FAQs
If an office action is issued, does it mean that my invention is not patentable?
No. Issuing an office action is a common practice and, in fact, one of the steps of patent prosecution process of a patent application. An office action is issued by any patent office to make sure that a patent is issued for a valid invention.
Is there a specific format for preparing an office action response, similar to a patent application draft?
There is no specific format to prepare the response. However, it is essential to respond to all the objections raised in the office action. Leaving or refusing to provide a response or to comply with the office requirements may result in the issuance of another office action or rejection of the patent application.
Can the examiner rely on different documents for non-obviousness/inventiveness rejection?
Yes. An examiner can combine two or more documents while examining the non-obviousness/inventiveness requirement if they think that a skilled person would be able to do so. The examiner provides reasoning as to why the different documents can be combined.
Can I add my modification in claims to argue objections of office action?
Any new matter cannot be added to the description or claims once the patent application is filed. In some jurisdictions, examiner may allow the incorporation of features described in the filed specification into the claims.
Can I speak with the examiner to make him understand the invention?
Different jurisdictions have different provisions for speaking with the examiner. For instance, during prosecution in the US, it is possible to schedule a call with the examiner after the issue of an OA to understand his viewpoint. During prosecution in India, a hearing provides an opportunity to discuss the invention with the examiner.
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