Responding to an office action raised against a patent application

An office action response is a response given by an applicant of a patent to the PTO during the prosecution of the patent application. A person who responds to an office action should be aware of techno legal language as they would be amending a part of the objected claim elements or arguing on the objections raised by the patent examiner. The response thus prepared must possess logical and analytical reasoning to broadly interpret and set aside the objection raised in the office action.

Who is the best person to respond to an office action?

The best person to respond to an office action is the patent drafter or the patent attorney who has a thorough knowledge on the invention and the patent law. Before drafting the application, the resource is expected to conduct a thorough prior art search. This knowledge on the application enables them to judge the application hand in hand with the examiner who cites reasons for not allowing a patent application. It is possible that during the search for prior art, the resource might have come across the cited patent or similar patents but still went ahead to draft the application as the point of novelty is different or missing in the identified prior art reference.

Best practices for responding to an office action

Before drafting a response to an office action, one must follow these golden rules stated below:

  • Separating all the elements in perceivable pieces to get a comprehensive idea of an office action.
  • Combining bits and pieces to identify the crux of the invention.
  • Targeting the cited references and the cited portions by the examiner.
  • Reexamining the application in detail to ensure no errors in the application.
  • Reassess the specification and claims, if the definition for every claim element is disclosed in the specification.
  • Thoroughly assessing the prior art and try to identify the deviation between the teachings of the application and the prior art.
  • Always asserting quality and good writing manners to PTO/examiner while responding to an office action.

Quick checklist

  • Identifying earliest filing date of cited prior art.
  • Verify whether the cited references are literally relevant with the novelty of the application.
  • Verify the examiner’s search strategy to assess if the point of novelty that was assumed by you at the time of drafting is the same as the examiner’s.  This will give the applicant upper hand while replying to an office action.
  • Most of the times the first office action is unclear because the examiner doesn’t have ample time to review the application. This is the reason, more than 73% of US applications receives first office action.

The above points are good to follow to understand the objections better and draft a clear and concise response while maintaining the cool demeanor which might also help win your case.