Once you file the patent application with patent office, it undergoes rigorous examination by patent examiner. If he finds any error in your patent application, you receive the office action. Thus, patent office action is an official letter from patent office that includes objections and reasons for rejection of your patent application.
Thus, patent office action, asks you to overcome these rejections and objections. For it, you need to draft an office action response with amendments and other claims to finally get the green light from examiner. You should also note that you need to file the response draft within the time frame allotted by patent office.
Also read: How to draft a patent application?
How to tackle patent office action?
Once you receive the office action, you need to file the office action response to overcome the rejection. Thus, the response draft you will be filing must be the improved version of your patent application. You cannot repeat the same mistakes which handed you the rejection at first go. Thus, it is crucial to design and follow a robust strategy to make the response draft fail-proof.
Following points in the given article will tell you everything which helps in creating a good and error free response draft.
Also read: Patent filing service and its benefits?
Drafting the patent office action response
When you are going to file the patent office action response, you must ensure to take the following steps –
- Analyse
In the OA, the patent examiner provides mapping for each claim of the patent application from the prior-art references. The applicant needs to analyse the prior-art references to check whether the claims of the patent application are disclosed correctly by the references. In simple terms, the examiner’s interpretation of the claimed invention in view of the prior-art references is analysed to ensure that the mapping given by him/her is correct.
2. Prepare a strategy to overcome the rejections and objections
After analyzing the OA, the applicant prepares a strategy. In particular, you can argue the rejections and/or objections if the interpretation of the patent examiner is incorrect. Otherwise, you can also add new matter from the specification of the patent application to the claims to traverse the rejections and/or objections.
3. Draft a response based on the strategy
The OA response is drafted as per the finalized strategy. To that end, the claims, specification, or drawings are amended if required. Also, each of the rejections and objections are addressed individually with sufficient arguments according to the finalized strategy.
Also read: Patent proofreading: Is it really needed?
Whom, to choose as your partner to create the best response draft?
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