Responding to Office Actions

In the U.S. Patent and Trademark Office, when an examiner takes up an application, the examiner often rejects all claims in the first office action. This puts the burden on the applicant and his or her attorney to respond to the office action and to explain why the claims, in original or amended form, should be allowed over the prior art. There are challenges in this process, because, for example, there may be a desire to amend the claims to add limitations not explicitly disclosed in the original application, but this may run afoul of a statutory prohibition against adding “new matter.”

The patent attorneys of Beem Patent Law Firm endeavor to anticipate the possibility of rejections by bolstering the original patent application with details, alternatives, ranges and parameters before filing it.

Another challenge in responding to an office action involves the possible desire to present arguments that may not be tied to claim limitations, which may result in the doubly undesirable consequence, first, that the examiner may refuse to consider such arguments and, subsequently, that after issuance of a patent, a court may hold such arguments against the applicant (now a patentee) in the form of “prosecution history estoppel.”

In former years, there often were several volleys back and forth, usually resulting in issuance of a patent. But more recently, it has been observed that an examiner often repeats or states new rejections in a second office action and designates that decision as “final.”

Generally, a final rejection is said to “close” the prosecution, unless the examiner agrees to further action (somewhat uncommon in recent practice), or the applicant files a request for continued examination (RCE) (requiring a substantial fee to be paid to the Patent Office), or the applicant files an appeal.

During preparation and prosecution of a patent application, it can be useful if possible to anticipate the potential for final rejection, for at least two reasons, one being to take such steps as feasible to obtain allowance (which may include filing a declaration and/or conducting an interview), and another being to place the claims and the record in good position for appeal, see Appeals to the Board, if that route should become desirable.

The patent attorneys of Beem Patent Law Firm are experienced in preparing, filing and prosecuting patent applications and in handling RCE’s and appeals. Contact Us for more information.