Maiorana, P.C.

USPTO Patent Attorneys

Strategies for responding to an Office Action

In another blog, discussed here, we went over the overall workflow of filing an application. We discussed responding to an Office Action generally, but not the specifics of what is involved. This blog will elaborate on the details.

The first step we do after receiving an Office Action from the Patent Office is log it into our system. This keeps track of the date when a response is due to the Patent Office. Next, we send a copy of the Office Action to our client. We try to do this right away, even if the response is not due for a while (typically 90 days, with extensions possible for 3 additional months if a fee is paid). This gives our clients a heads up and provides time to make business decisions.

Normally, our admin does the leg work involved with emailing the Office Action to our clients, along with a note about the due date. One of our attorneys is also included on the cc list. The attorney will follow-up via email with the general procedural steps needed.

In the meantime, the client/inventor should take a look at the references cited in the Office Action. In the best case scenario, the references are only somewhat related to the patent application and claims, but have distinctions that are easily articulated by the client/inventor. In such a case, a quick note to our attorneys is beneficial. If the references look super close, that may be an unexpected Office Action and a phone conference may be the best follow-up.

In a typical response, the claims may be clarified (through an amendment changing the words of the claims) to point out distinctions when compared with the references. The big picture is to point out to the Examiner what we have, in the claims, that the references don't have. We can add to the claims based on the specification to clarify the distinctions between the invention and the references. Arguments are also presented. As far as input from our clients, communication of the big picture is what we are looking for.

Sometimes we discuss whether preliminary analysis of the art is needed before we begin preparing a response. We do bill for such analysis. This would be a scenario where more information is needed by the client/inventor to determine whether it makes financial sense to move on. If we do not do such preliminary analysis, we can begin preparing a response to the outstanding Office Action. If the claims look like they are very close to the reference, we may stop part way through the preparation, and have further discussions with the client/inventor, perhaps even discussing whether it would be prudent to stop spending resources on the case. While the majority of our cases do move along to issue as a patent, there are a few along the way that were abandoned.

With a first Office Action, it is sometimes difficult to get a feeling of how difficult it will be to get a patent to issue. After filing one response, then receiving the second Office Action from the Patent Office, we get a better feeling of whether the case will be allowed or will take multiple responses.

In the case of a Final Office Action, the same general procedures apply. Sometimes the Patent Office adds additional references to a final rejection. They are allowed to do this under the Patent Law and/or Statutes. Additional amending may be needed to address the new references. Sometimes the Patent Office drops all pending rejections, then issues all new rejections based on all new art. While this scenario is good in the sense that the original rejections are dropped, the new rejections do need to be responded to. We look at this as a partial success in moving the case along.

We do our best to keep our clients reasonably informed on the process. We try to keep the costs down. Additional analysis may increase the overall costs involved. Collaboration between attorney and clients is useful in increasing our effectiveness.

You can always ask one of our Affordable Patent Attorneys for additional information. Please call us at MI - 586-498-0670 or CA - 408-890-6549.

  • Chris Maiorana
  • August 2019, Revised January 2021
[1] Not to be confused with a patent interference count.
[2] We are a short drive to the Elijah J. McCoy Midwest Regional U.S. Patent and Trademark Office in Detroit, Michigan.

If you would like us to analyze your particular situation, call us to set up an appointment to discuss starting an engagement. Please do not send confidential information prior to negotiating an engagement.