Successful Patent Office Action Response

December 5, 2022
- Patent Drafting & Illustrations
- Patent Prosecution

A registered patent can only be obtained after submitting a patent application. The USPTO then designates a Patent Examiner to examine the patent application and assess its patentability and conformity with legal requirements. In a report referred to as an “Office Action,” the Patent Examiner will assess the patentability of the patent application and may include one or more rejections and/or legal objections.

Patent Office Action

A patent application is added to a queue for examination after it is received by the USPTO. The Patent Examiner summarises their conclusions in an Office Action after thoroughly reviewing your patent application. Any aspect of the patent application may be the subject of an Office Action that raises one or more problems.

The study, however, primarily focuses on the assertions. Both formalities and patentability are assessed with regard to the claims. The formalities of the other portions of the patent application are checked, as well as whether they adequately support each of the claims. Detailed information regarding office action is available at https://www.uspto.gov/trademarks/maintain/responding-office-actions.

Objections raised in an office action

Rejecting claims in light of existing knowledge

Claims alone can be “rejected.” Prior art may serve as a basis for rejection. One or more publicly accessible materials that the Patent Examiner cites as revealing the features claimed in your patent application but that were present prior to the filing date of your patent application are considered prior art. If several claims are pending, some claims may be rejected, while others may be accepted.

Other Claim Rejections

In addition to previous art disclosures, claims may also be denied for other grounds. Due to the claims’ form and/or compliance with relevant patent laws, the Patent Examiner may issue these rejections. The Patent Examiner will reject a claim for several reasons, such as if it identifies an invention that is not described in the patent application or if it is focused on any non-patentable subject matter such as an abstract idea.

Obviousness

According to 35 U.S.C. 103, a claim may be denied if “the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person possessing ordinary skill in the art to which the claimed invention pertains.” A combination of two or more references, including the justification for the combination of the listed references, such as patents and published patent applications, is the basis for the majority of obviousness-type rejections.

Anticipation

Rejections based on anticipation are those that are made in response to a single reference disclosure or publication that was made or published more than a year prior to the application’s priority date or filing date. Legal support for these denials is provided by 35 U.S.C. 102, which also specifies that a claimed invention is not patentable if it is disclosed in a printed publication, in public use, for sale, or otherwise accessible to the public before the claimed invention’s effective filing date. This is in accordance with the guiding idea that anything that was previously in the public domain (i.e., everywhere) is not an original or innovative invention, regardless of who later claims it to be.

Non-patentable Subject Matter

Subject matter rejections are typically the result of the Patent Examiner arguing that the claimed invention is not eligible for patent protection because it is focused on an abstract idea or other non-patentable subject matter under 35 § 101. They are frequently seen in rejections of claims directed to software inventions, business methods, and computer-implemented processes.

Other Rejections

Other types of rejections can be for claiming multiple patentably distinct inventions in a single patent application, for failing to clearly state and assert the invention (generally that the claim is unclear), for a specification failing to enable or support the claim, for a claim failing to recite an element or limitation necessary for the enablement of the invention, and for resubmitting the application.

The type and substance of the rejections and/or objections, as well as the kind of Office Action that was issued, are all important strategic considerations when responding to Office Actions.

The Best Ways to Response to Office Action

Comprehensive written response

A thorough written defense of the invention’s patentability must be provided by the inventor. The written piece should also be accurate and support any patent claims. If the invention is not new and inventive, the examiner may occasionally issue an office action. In such cases, improving the application’s assertions raises the likelihood of a successful submission. By reducing the scope of the claims, this change would encourage the examiner to consider and investigate the patent.

Opening Move

Patent documents consist of various components, such as the field of the invention, the object, the summary, the description, the claims, and so on. To start with, which part of the document calls for writing a response is a tricky point to ponder. Starting with the independent claim or principle claim is the best approach. An independent claim is generally the first claim and consists of the subject matter of the invention for which the inventor is seeking protection for.

The independent claims are they amendable? If yes, can you accept a narrower scope as a result of each independent claim having extra characteristics or limitations? Finding the appropriate balance with the patent examiner is a bit of a dance while trying to overturn a prior art refusal. To overcome prior art rejections, you must add specific features to each independent claim without divulging too much information. On the other hand, giving too little puts you at risk of getting another Office Action.

Dependent claim/claims

A dependent claim does not alter the scope of the independent claim on which it is based. Therefore, any limiting language contained in a dependent claim will only apply to that specific dependent claim and not the independent.

Consider a scenario where a gadget with a container and a lid is covered by an independent claim. The device of claim 1 also includes a handle on the lid, according to dependent claim 2. It would be incorrect to conclude from reading dependent Claim 2 that Claim 1 now needs a handle.

Examining dependent claims as secondary or tertiary categories of features is the correct way to review them. Even when they are not included in the independent claim, those characteristics might nevertheless be significant. Therefore, if a competitor’s product lacks the attributes listed in your dependent claims, your more general independent claim may still apply (e.g., a competing device that has a box and a cover, but no lid).

Telephonic Interview

The fundamental tactic for reacting to a final office action is to speak with an examiner over the phone. A phone call will reveal so much more information. Examiners prefer to give more credence to information provided by the inventor. Examiners frequently play a big role in helping the prosecution reach an agreement. They might even propose modifying the assertion.

You can call the examiner handling your case and speak with them even if you must submit a written response. Written communication is frequently less effective and lacks the immediate response that a phone call provides. It is essential to communicate in writing so that the public has a record of the points you made. A written response is given to the interviewer as a talking point to help with the interview.

Conclusion

When their patent applications are rejected, some entrepreneurs and inventors take it too personally. They believe that their journey has come to an end and that the money they invested was a waste. It is unlikely that this will be a waste, at least for the initial rejection.

It’s crucial to see rejections correctly in order to avoid being depressed when you consider them. Your patent application’s rejection if this is the initial office action is not a justification to give up on the patent application procedure. The examiner’s judgment alone constitutes the denial. Of course, the examiner’s judgment is the most important, but that does not mean you are without options.

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