An Office Action (OA) is an official letter that is sent by a patent examiner to an applicant after a thorough assessment of a patent application. It typically includes objections and rejections on the specification, claims, and drawings in the application. To overcome these rejections or objections, the applicant must draft and file a response with the necessary arguments and amendments within the stipulated time.

However, before drafting an Office Action response, it is crucial to formulate a robust strategy to ensure that the response is fail-proof. The following article covers everything related to the preparation of such a strategy.

Drafting an Office Action Response

While drafting an OA response for a patent application, an applicant must perform the following steps:

Steps to be performed while drafting an Office Action response

1. 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, the rejections and/or objections can be argued if the interpretation of the patent examiner is incorrect. Otherwise, new matter from the specification of the patent application is added 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.

Standard Approach for Preparing a Strategy

As discussed above, devising a strategy is a crucial part of drafting an OA response. Given below is the standard approach for preparing a strategy:

• A patent drafter analyses the OA and while doing so he/she reads only the mapping of claims from the cited prior-art references.
• In case the drafter identifies a difference between the mapping of a claimed feature and the cited prior-art reference(s), he/she considers that difference as a point of argument and drafts the response accordingly.
• In case the claims are mapped correctly, then the drafter finds a new subject matter from the specification and adds it to the claim set.

Disadvantages of the Standard Approach

 Although the standard approach saves time, it overlooks several important aspects including:

• The problem being solved by the subject patent application.
• Relevance of the claimed features with respect to the solution of the problem.
• Status of the application throughout the prosecution history.
• Scope of the application in other jurisdictions.
• Written opinion of International Search Authority (ISA) on International Search Report (ISR) for the patent application (in case the application is filed internationally).
• The problem being solved by the prior-art references.

Consequences of Using the Standard Approach for Preparing a Strategy

As the standard approach overlooks the aforementioned aspects, it cannot be used to create an effective strategy. Some of the repercussions of using this approach are as follows:

1. The patent application gets rejected again. Thus, the applicant has to bear the cost of filing the next OA response.
2. Even if the application gets granted after several rounds of OAs, the quality of the allowed claims remains extremely low.
3. Furthermore, the active period of the patent that has been granted after years of responding to OAs is so less that it cannot get the full benefit of the grant.

From the consequences mentioned above, it is clear that there is a need of preparing a correct strategy before drafting an OA response.

How to Prepare the Right Strategy

1. Quickly check the rejections and verify the dates of prior-art references. The date criteria is used to determine if the prior-art references are disclosed before the effective filing date of a subject patent application. If date criteria is not met, then we do not need to analyse the prior-art references.

2. Read the specification thoroughly and identify the problem to be solved or the innovation that is being introduced in the technology domain.

3. Find key aspects of the patent application from the claims and the specification.

4. Check the written opinion on ISR from online public sources such as WIPO and Global Dossier. This report generally provides an analysis of the inventive features of the patent application.

5. A patent application or a granted patent must have similar scope in different jurisdictions as it is extremely helpful during litigations. To that end, check the status of the subject patent application in other jurisdictions from online public sources such as Global Dossier and Espacenet.

6. Read the OA as well as the cited prior-art references thoroughly to check if the references are disclosing the features of the subject invention. Find out one or more differences from the prior-art references.

7. Check the entire prosecution history using online public sources such as USPTO Public Pair, Espacenet, and Global Dossier. From the prosecution history, analyse which features have already been presented in the previously filed response. So that you do not end up arguing regarding a feature that has already been argued in previous responses to the OA.

8. Finalize one or more features to be argued in view of the analysis (step 2 to step 7) and draft the response accordingly.

9. If all the claimed features are mapped correctly, find out new subject matter from the specification. The new subject matter should be related to the solution part of the subject invention. It can be added in the claim set to draft the OA response.

By following the above-mentioned steps, you can create a robust strategy that helps in increasing the chances of obtaining a patent.

Conclusion

It is common for patent applicants to face rejections despite filing their applications carefully. Patent examiners who reject the applications send OAs to the applicants and give them sufficient time to respond to the cited objections or rejections.

It is common for patent applicants to face rejections despite filing their applications carefully. Patent examiners who reject the applications send OAs to the applicants and give them sufficient time to respond to the cited objections or rejections. In case the examiners do not receive the right response on time, the patent prosecution process is halted. One way of ensuring the right OA response is by creating a robust strategy before drafting the response.

Sagacious IP’s Office Action Response service is designed to help the clients overcome rejections or objections raised by a patent examiner. Our team has extensive experience in responding to both rejections and objections.

-Mohit Chimankar, Neha Malia (ICT Drafting and Prosecution) and the Editorial Team

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