Patent Prosecution – Strategizing Office Actions For A Favorable Outcome

The patent prosecution process describes the interaction between the patent seekers with the patent office to attain a grant for their patent application. It involves drafting and filing the patent application and working with the patent office to gain patent protection over the invention. Office Actions are a crucial part of this process as it is the response of a patent examiner to a patent application after its examination. The response consists of references to the prior art, i.e., evidence of invention already known and why the applicant’s claims have been allowed or rejected.

Our latest case study enumerates the challenges faced by one of our US-based clients in drafting responses to their office actions and the solutions we offered. The client had filed multiple applications that were technologically complex and were related to each other. The complexity of the underlying technology on which the patent applications were based was prolonging the process and leading to narrowing down of the claims. It could have proved counter-productive, but we offered a strategized solution to overcome the situation.

Understanding Patent Terminologies

Before we begin with the case in question, it is important to familiarize ourselves with a few patent terminologies:

Inventor: A person who has contributed to the invention claimed in a patent application. There can be multiple inventors for a single invention. Moreover, they can be an independent individual or an engineer/scientist working in an organization. However, they may or may not have any ownership interest in the patent.

Patent Assignee: Organization(s) or individual(s) that have an ownership interest in the legal rights of a patent. A patent may or may not have an assignee, and it can also be changed at a later date.

Applicant: The organization or individual that files the patent application is called the “applicant.” This could be the original inventor, or it could be the assignee.

Holder: Patent holder and patent assignee are the same.

Manual of Patent Examining Procedure (MPEP): It is a document published by the United States Patent and Trademark Office (USPTO) that describes all the laws and regulations to be followed while examining a patent.

Now we move further to understand the common challenges faced by patent seekers while drafting an office action response.

Challenges in Drafting Office Action Responses

Drafting Office Action responses for various patent applications of a common inventor(s) or common assignee(s) can be challenging. There is often a thin line distinguishing the novel/inventive steps of such patent applications. Additionally, the technology of these patent applications starts to saturate with time. As a result, the prosecution process remains open for an extended period. Furthermore, the patent application attains allowance with multiple office actions leading to narrower claims. Both of these scenarios are not beneficial for the patent holders. The reason being that the patent holders are left with little time to monetize their claims as the validity period of a patent is capped at twenty years and includes the duration of prosecution. In the second part, the narrowed scope of claims does not allow the patent holders to cover different products or even the targeted products.

Therefore, the objective of the patent applicants is to get an allowance in the early stages of the prosecution with the broadest possible claims. In addition, it helps maximize the monetization of the patents by covering more products under the claims for the most prolonged period possible. Such objectives are often challenging to meet.

Earliest allowance and broadest claims

Our client was facing similar challenges, and many of their patent applications were pending prosecution. We were given a set of patent applications to draft their office action responses. An effective drafting practice of the office action responses requires understanding the client’s objectives. Towards this end, we employed a strategic approach that applies to every office action response. It has two steps –

1. Analyzing the office action and prior-art references

2. Drafting the office action response as per the analysis

For the first step, the entire subject application is thoroughly analyzed. The solution offered by the invention is determined from a detailed description of the application. Moreover, we check the validity of the prior-art references under the filing date criteria, common inventors, and common assignees. The standard MPEPs are utilized to navigate the rejections if the references are invalid. Otherwise, the claim set of the subject application is analyzed to make sure that the solution part is mentioned in it. The solution part indicates the patent application’s novel/inventive aspect, so we give importance to analyzing this aspect with accuracy.

In the second step, the rejections stated in the office action and the examiner’s interpretations are analyzed in view of the prior-art references, to determine whether the invention was disclosed earlier or not. In the latter case, the examiner’s interpretation is challenged by presenting the arguments in the office action response.

Or else, the subject patent application claims are amended so that the prior-art references are not disclosing the amended claims. In addition to this, we need to make sure that the amendments contribute to the invention’s solution part.

Thus, in the first stage, we develop a strategy to overcome the rejections of the office action. Then, in the second part, the office action response is drafted, wherein the claims are amended as per the strategy, and the arguments are presented.

Moreover, to draft a fool-proof office action response, the following steps are executed:

  • The subject application is thoroughly analyzed to amend the claims, and the generic features are kept broad.
  • The features to be argued are recited in the broadest possible manner so that the prior-art references are not rendering the invention obvious.
  • The arguments included are drafted to make them crisp and clear, stating the actual difference between the claimed invention and the prior-art references.
  • The office action response is thoroughly checked to fix antecedent errors, spelling/formatting issues, missing elements, and potential 112 issues.
  • Lastly, the office action response draft is filed after a thorough quality check.


We received forty-two office actions to draft office action responses, out of which the client abandoned two applications while fourteen office actions were allowed. Another 19 cases have been filed, and their response is pending. In addition, seven responses are to be filed. See Graph 1 below.

Graph 1: Showcasing the Legal Status Count of the client’s Patent Applications

From the above statistics, it can be construed that our strategy has successfully worked for the client, specifically the 14 allowances that the client appreciated. Further, in the cases where responses were entered, the client spent minimal time in analysis, and their only effort expended was filing formalities undertaken with the patent office.

Tested strategy for office actions

Sagacious IP has filed several office action responses by following the above-described approach. As a result, we attained notice of allowance on almost all the patent applications by the second round of prosecution. Accordingly, we improved the client’s patent application allowance rate with the broadest possible claim sets to target different products for monetization. To know more about our office action response services, please click here.

– Neha Malia (ICT Drafting) and the Editorial Team

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