Patent Office Action Response Best Strategies to Follow

When you file the patent application with PTO, the examiner there examines it. If your application doesn’t meet the standards then you receive office action from the patent office. So if you want to make your invention get patent grant, you need to rectify these office actions and refile your patent application. That’s why you need a professional assistance of an IP paralegal for preparing patent office action response draft. IP paralegals are patent professionals who have expertise in patent prosecution. You can hire them as your partner during your journey of patent prosecution.

One such service of an IP paralegal is, preparing office action response to refile your patent application. There expert strategies help you defend your patent application after office action confidently in front of patent office. Keep reading this article if you want to know more about it.

Also read: Patent Prosecution Paralegal: Importance and Role

Patent Office Action: What’s next to do?

Unfortunately if you receive the office action, the next step is to see what you can do now. So your next step is to understand what has been the reasons for rejection of your IP application. The office action that your receive is basically a report from patent office that contains the reasons for rejection and objections by them.

So you should study that report thoroughly with your IP paralegal. It will help you know and find all the objections raised by patent office. The next part is to prepare an office action response draft with the help of your IP paralegal assistant. The draft must contain all the evidences that can nullify the objections of patent examiner. Hence, it is very important to have a proper strategy to formulate best response draft. Else you will again face office action, and again have to pay for refiling your application.

The next part of this article will tell you this only, the best procedure to formulate effective office action response draft.


How to Draft the best office action response?

Following are the steps that professional IP paralegals take while formulating the office action response for your patent application, Read them carefully and expect the same from your IP paralegal:

Doing Analysis of office action and patent application:

One of the common reasons for office action is, existence of prior arts. If your application is rejected on this basis then examiner also gives the references of prior arts with each claim you have mentioned in the application. So the IP paralegal starts doing the research and tries to find that whether the references of patent examiner is correct or not. If it is correct you need to modify your invention. However, if it is not correct, you can simply refile the application with evidences to proof that your claim is novel.

Other reason for office action may be the non-applicability of your invention. Thus, if you face office action for this reason, you simply need to rephrase your application more comprehensively. You need to attach claims and proofs that explain the practical use of your invention.

In similar way there are many other reasons for office action like, error in patent drawing, grammatical errors, etc. So you must study the office action report carefully and then devise the strategy to refile your application.

Preparing strategy for answering the office action

This step simply means once you have analyzed the office action report completely, find the steps to counter them. You can either find the evidences that makes the objections of examiner null and void. Or if you cant find evidences then bringing the required changes in your patent application to fulfil the demands of patent examiner. You can also add new matters in your patent application to make it look more effective, like, adding patent drawings.

Draft a response based on the strategy

Once you are clear of the objections and the strategy to overcome them, now is the time you pen it down in a document. It is preparing the office action response draft. Add all things that you find during your strategy preparation to address the office action Once you are clear of the objections and the strategy to overcome them, now is the time you pen it down in a document. It is preparing the office action response draft. Add all things that you find during your strategy preparation to support your patent application and address office action.

Make sure to address each objection specifically with sufficient evidences and arguments you found during the strategy formulation period.

Also read: Patent Paralegal: What is their Job Role

Whom, to choose as your partner to create the best response draft?

Above you read, how office action can drain your money and efforts you spent in developing your invention. Even worse is you have to refile the application that too requires refiling fees. So wonder, if you once again face the office action, how troublesome it will be for you. Thus, you need to take the professional assistance to help you with preparing an office action response draft. If you do it yourself, you will end up committing mistakes and again face office action. But don’t worry you can take our help, i.e. “Patent Paralegal Force”.

Working with experience of 10+ years, we are currently serving more than 45 countries all across the world. We take care of all your patenting needs, such as IDS management, patent proofreading, patent docketing etc. The price also we charge is minimal, and justifies the service we provide. Read more about us here.

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