Before we get into Patracode’s diligence and services regarding Office Action, a short idea about Office Action is presented below. When a patent is filled and forwarded for examination of its validity, the Examiner at the patent office checks for its eligibility and formal attire as per law of each jurisdiction. After which a preliminary judgment is passed which is called FER or First Examination Report which may be seeking for any kind of rectification or amendment, or directly giving out rejections if the application deems to be not fit and eligible. After which the patent attorney, or agents shall prepare a response containing arguments, explanations that may be contrary or accommodating the examiner’s needs as per the cases required which is also called Office Action Response.
Finally after a number of office actions and replies the examiner will come to a judgment over the patent application. Same events take place during pre and post grant opposition of a patent but the office actions is conducted by 3 entities, the applicant, the examiner and the opposition filing party. Patracode prosecutions treat office action very seriously as it is the most important part of the prosecution of an application.
An application may be very well drafted but if the arguments to the office action are weak it could ruin a potential innovation’s protective rights. Our practitioners are technically strong and trained to craft technical arguments based on the laws guided by patent laws around the globe.
Steps involved during a Technical Argument include:
Identifying whether a claim set needs to be amended or the arguments shall be based on original claim set. If applicant prefers for amending the claim set, an appropriate amended claim set is generated and approved by the client. Further, differences between amended or original claim set, as the case may be, and the cited arts is charted out. Before any step, it is generally advised to double check whether the cited art predates the patent application filing date or not.
An examiner is generally not expected to make a mistake over this point, however it is always good to keep this in check. Further, preparing arguments based on the technical differentiation with respect to prior art pointing specifically towards Novelty and obviousness aspects. Novelty is a subject of facts and arguments are based on eye to eye analysis, however for Obviousness arguments are generally based on point of law which is more less about determining difference between the prior art and claims, whether the prior arts and the differences in combination reaches to the invention, and whether the documents cited by the examiner can be combined by “a person skilled in art”.
Obviousness is generally debated at each point of scrutiny whenever it is called for at Patent Office, at Appellate Board or in Court of law, and each time the scrutinizing authority may reach to a difference answer. Doing such a technical study and exploration helps out immensely to draft an appropriate legal response to an office action.
Office action response drafting are non-technical components, however, legal, of an office action that is made into a base document providing the patent prosecutor a head start to drafting a detailed office action response. Also a template is followed to begin drafting a response that keeps things accurate, fast and efficiently punctual. Drafting specifically to a jurisdictional requirement or client-specific needs. Drafting an argument using technical supported points in particular to an office action objection/rejection and references cited in it. Drafting amendments (changes to the claims and description of the application) if needed to support an argument or meet the patent office needs.
Distinguishing formal and informal objections, wherein formal objection may be related to the subject matter of the application in accordance to the patent laws, whereas informal objection may be related to the rules and regulation formalities of a Patent Office and making alterations accordingly. To identify unity of invention, wherein an application may have only one novel subject matter otherwise another application may be filed for each new subject matter.
Anticipating this and filing other application in prima facie and saving client’s time and money. Drafting responses during Post Opposition i.e., after patent grant prosecutions, which includes expertise and experience of litigation areas. Keeping in touch with the client and inventors at all times and taking feedback as a proactive activity.
Patracode’s experts have been gaining experience of to work over hundreds of matters and have completed and solved most of their pre grant prosecutions on an average of 1-3 responses. Things that need to be considered and focused during an office action can become very technical or just plain simple legal formality compliance issue.
Patracode follows the usual process during a technical analysis for an office action response starting with the jotting down of all the objections given by the examiner, after which a process of solutions are orchestrated solving each objection one by one and in a specific order so that it may reduce work and increase efficiency. The standard process is to conduct a claim chart whenever a prior art is cited by the examiner, here we compare the elements that our application is claiming against the cite arts.
Doing this prepares us with knowledge of what the examiner has been focusing from our application, and what are the similarities that has been shown by the cited prior art. Next step is to see if there is a way we could turn around the claim just enough to overcome the similarity but not change the invention’s main focus with the inventor’s or assignee’s consent. Accordingly, Patracode also rechecks for the novelty, obviousness and other patent laws restriction along with the cited prior art, and provide an argument or explanation on the basis of laws and trying to convince the examiner that it is a legit application. However, of course when things are just wrong we go for amendments and change the language or formal aspects of the application.
Formal objections are the ones wherein the attire of the application may not be in sync with the regional patent office requirements and these are rectified at the earliest. Other things that are monitored during an office action of an application, is to make sure the unity of invention exist after all the amendments, arguments and explanation is provided.
Because when the unity of invention is hampered, as in there is an impression of 2 inventions collaborated and tried to be protected by one patent it will receive an objection or rejection that can be over-come by a division of patent or create additional patents altogether. The unity can be determined by the understanding of claims.
Finally drafting for the response can be initiated after confirming the final technical analysis, the arguments and amendments (changes to the previous version of application). They are then listed out. The drafting is compiled to be compatible with all the formal attire, requirements as per the receiving patent office. Drafting response can be tricky as every receiving patent office have few changes done to their formal requirements, also their rules and sections numbers are different which needs to be mention every time an argument is being passed.
Hence Patracode follows a tight process when it comes to office action, where every possible help is acquired from technical (Patent agents, inventors, analysts) and legal experts (Patent agents, patent attorneys) to maximize the opportunity of getting the office action cleared and receive a grant over the patent or excel during opposition issues.The process of claim charting, monitoring the novelty, obviousness and other restriction become the part of technical analysis, whereas claim amendments and arguments are put on the paper by the legal expertise backed by the technical analysis.
