Patent Prosecution & Office Action Response

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Patent Prosecution &​ Office Action Responses

Patent prosecution generally refers to the process of advancing a patent application towards grant and securing patent rights. Patent prosecution starts with filing of a patent application and entails responding 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 involves understanding the objections raised by the Patent Office, preparing a strategy to overcome the objections, and responding to the Patent Office in writing. 

Novelty, Obviousness, and Inventive Step are common issues raised by the Patent Office. Patent prosecution professionals analyse the objections and documents cited by the Patent Office and prepare a written 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 analysing Office Actions received from Patent Offices and responding to the Office Actions for advancing patent applications towards grant.

Challenges Faced While Preparing for Patent Prosecution & Office Action Responses

Vague and incomplete response that leads to extended examination

Vague and incomplete response that leads to extended examination

Amendments that may unnecessarily narrow scope of protection

Amendments that may unnecessarily narrow scope of protection 

SEP declaration databases are not maintained to provide an accurate landscape of verified SEPs!тАЛ

Unallowable amendments that are not supported by original specification 

Complete manual research & analysis resulting in a higher cost of reviewтАЛ

Submitting details that may cause problems during enforcement and litigation   

Accuracy in legal status_

Time crunch to analyse objections and prepare response 

Our Services

Office action response drafting

A response to OA/ER determines 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 viewpoint of Examiner. Based on the cited documents, we prepare strategy whether to amend or provide arguments to overcome the objection/rejection.

While amending, care is being taken as not to make amendments which 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 next course of prosecution, it is important to carefully reply to the objections/rejections raised in OA/ER. We assist clients in preparing multiple strategies 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 have to respond to issued OA/ER individually for each jurisdiction in order to obtain grant in that jurisdiction.

We assist clients in drafting instruction letters to foreign associates for preparing responses of the patent application 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 in clearly differentiating features of the claimed invention and in preparing the most suitable amendment and response strategy.

Oppositions and third-party observations

We assist in preparing responses to Pre-grant as well as Post-grant oppositions. We also assist clients in determining closest prior arts for issuing notice of oppositions.

We further provide our observations to clients which help them decide 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.

FAQ

Our Methodology

Understand the objections/rejections in the OA/ER, analyze cited documents, and prepare one or more strategies to overcome the objections/rejections. 

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AnalyseтАЛ
mitigate icon

Develop understanding

In-depth analysis

Strategy building

Our Methodology

  • Initial discussions with clients to understand desired scope of protection and any business directions​

  • Understand your product portfolio and identify relevant portfolio of focus

    Establishing in-depth understanding of invention by engineers and patent agents​

  • Understand your product portfolio and identify relevant portfolio of focus

    Detailed analysis of rejections and objections raised in the Office Action by the Patent Office​

  • Understand your product portfolio and identify relevant portfolio of focus

    Preparing strategy document with multiple strategies (arguments and/or amendments) to overcome the rejections and objections raised in the Office Action​

  • Understand your product portfolio and identify relevant portfolio of focus

    Preparing draft response to the Office Action for filing ​

  • Quality assurance with multiple-level reviews by Patent Agents and Patent Attorneys_

    Multiple reviews of strategies and draft response by Patent Agents & Attorney​

Why TT Consultants?

Frequent team trainings 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 prosecution team of Patent Attorneys, Patent Agents, Ex-USPTO examiners, Subject Matter Experts, and Engineers.​

Expertise in responding to rejections in all kinds of Domain – Software, Electronics, Communication, Mechanical, Life Sciences, etc. ​

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FAQs

No. Issuing an Office Action is a common practice, and in fact, one of the steps of prosecution of a patent application. An Office Action is issued by any patent office to make sure that a patent is issued to a valid invention.​

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 response or to comply to the office requirements may result in issuance of another office action or in refusal of the patent application.

Yes. An Examiner can combine two or more documents during examining 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. ​

Any new matter cannot be added in the description or claims once the patent application is filed. In some jurisdiction, Examiner may allow incorporation of features that have been described in the filed specification into the claims. ​

Different jurisdictions have different provisions for speaking with the Examiner. For instance, during prosecution in US, it is possible to schedule a call with the Examiner after issue of an OA to understand his viewpoint. During prosecution in India, hearing provides opportunity to discuss the invention with the Examiner.

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