EXPERT TIPS FOR NAVIGATING PATENT OFFICE ACTIONS
Developing an invention is a time-consuming process that can sometimes require a significant financial investment by the inventor(s). It is not surprising therefore that some inventors try to minimize their expenses when filing a patent application. Many inventors draft and file the application on their own - individuals commonly referred to as pro se applicants. The term "pro se" refers to a person who does not retain a lawyer and appears their own behalf before the United States Patent and Trademark Office (USPTO).
The Patent Office offers assistance to pro se applicants, but conspicuously advises: "The patent process is a complex set of laws, regulations, policies and procedures: therefore, the USPTO always recommends using a registered patent attorney or agent to assist in preparing your application."
Patent professionals, particularly patent attorneys, can help you draft a patent application that can succeed in examination and withstand the test of time. And, importantly, patent professionals can help applicants respond to a rejection letter ("Office action") stating the claims in the patent application are not patentable. Almost all patent applications receive at least one Office action before the grant of a patent.
Understanding Office Actions
After a patent application has been submitted to the USPTO, it is assigned to a patent examiner who is generally familiar with the technical nature of the subject matter described in the application. The patent examiner is charged with conducting a search for any publications that may be relevant to the patentability of the invention claimed in the patent application, and with evaluating the patent application for the various formal requirements defined by the patent laws and regulations. If the patent examiner spots an issue with the patent application, she will mail out a formal communication to the applicant. The Office action should contain all relevant objections or rejections, and the applicant must submit a timely response to the Office action that addresses each of the issues raised.
Evaluating the Situation: Are the Issues Raised Minor or Major?
Office actions are issued for a variety of reasons. Sometimes, the patent examiner requires more information or clarification about the claimed invention. Other times, the examiner has concerns about the patentability of the claimed invention in view of the prior art. In any case, it's important to remember that receiving an Office action does not mean the application is doomed. It simply means there are some issues that need to be addressed to place the application in condition for allowance. The first step is a review the Office action to determine whether the issues raised are minor or major.
Minor issues usually involve formalities or technical matters that can be quickly addressed. Such issues may include:
- An incorrect claim of priority to another patent application;
- A typographical error in the claims;
- A formatting error in the claims, drawings, abstract, or specification; and/or
- A double patenting rejection over another application or patent owned by the applicant.
Major issues are substantive issues concerning the patentability of the claims in the application ("the claimed invention"). Some examples include:
- An allegation the claimed invention lacks of novelty over the prior art (e.g., a published patent or article);
- An allegation the claimed invention would have been obvious to a person having ordinary skill in the art in view of one or more prior art publications;
- An allegation the claimed invention lacks enablement, which means that undue experimentation would be required for a person skilled in the art to perform the claimed invention;
- An allegation the claims contain indefinite terms; and/or
- Concerns about the invention's utility or usefulness.
Crafting a Winning Response: Seek Professional Help
The key to overcoming the issues raised in an Office action lies in developing a smart strategy. An experienced attorney can efficiently analyze the rejections, review the prior art references cited in the Office action, and formulate an approach that efficiently addresses each of the issues.
Below are five questions, the answers of which may impact the strategy.
Did the examiner identify any allowable subject matter?
One of the first things to look for in an Office action is some indication of allowable subject matter. For example, perhaps the examiner found prior art that teaches each of the limitations in the broadest independent claim but the same prior art does not suggest the limitations in a dependent claim. In such a case, the independent claim can be amended to include the subject matter recited in the dependent claim, and because the cited prior art did not disclose that subject matter, the independent claim is now allowable over the cited prior art. Many examiners will call out allowable subject matter in an Office action to assist applicants, so the first step is to look for the low hanging fruit.
What motivated the examiner to issue the Office action?
Patent examiners work in a quota system, which means their employee rating is based in part on whether they examined a predetermined number of applications during the fiscal year. Sometimes, the timing of an Office action with questionable rejections may be a result of the examiner trying to meet their quota. It's fair and sometimes helpful to consider what motivated the examiner to issue such an Office action.
Did the patent examiner make a mistake?
Patent examiners have a limited amount of time to work on each patent application. Because of the quota system, examiners cannot spend weeks ensuring their examination of a patent application is perfect. There just isn't enough time for perfection. And because patent examiners have a limited time to (i) carry out a prior art search, (ii) review the search results, and (iii) draft a comprehensive and detailed Office action, they can make mistakes.
It is important for an applicant to review the merits of each objection and rejection before amending their patent application in any manner. Some of the rejections or objections may be based on an error, such as misreading the claims of the patent application, overlooking important data in the written description, misreading a prior art publication, not reading the prior art publication in its entirety, overlooking the publication date of a publication, overlooking the applicant's claim of priority, etc.
When patent practitioners spot an error in an Office action, the strategy for responding may change completely. For example, instead of spending multiple hours evaluating the references cited in an Office action and drafting a reply addressing the cited references, a 15 minute phone call to the patent examiner may lead to a quicker solution, such as the withdrawal of a rejection or the entire Office action.
Is the patent examiner a lawyer?
Examiners are required to have enough technical education and experience to understand the subject matter in the patent applications they examine. But examiners are not required to be lawyers. In most cases, their legal training is very limited and their education is obtained "on the job."
Rejections in an Office action are sometimes based on a misunderstanding of the law. Patent law is not as simple as one might expect, and examiners can make confusing rejections as a result. Applicants who are not lawyers themselves should work with patent professionals to increase their chance of success at the Patent Office.
When is an applicant's response to an Office action due?
Time is of the essence when responding to an Office Action. The USPTO typically provides a three-month deadline for applicants to submit their responses, although extensions are available for a fee. A timely response can help maintain momentum and demonstrate your commitment to securing patent protection for your invention, and a patent professional can help keep you on track.
Conclusion
While it's possible for a pro se applicant to properly respond to an Office action, the odds are against her. Receiving an Office action can be intimidating, and a winning response must be thorough and comprehensive. The response must also be persuasive. A careful review the examiner's comments is required to understand what the issues are and how to address them head-on in a well-reasoned response.
The complexities of patent law often make it necessary to seek the guidance of a skilled patent attorney. An experienced patent attorney will maximize an applicant's chance of success. Lawyers are trained to use clear and concise language and to provide ample evidence to support the patentability of the claimed invention. With help and the right approach, applicants can overcome the hurdles in an Office action and secure a patent.
Contact an Experienced Patent Lawyer
Don't hesitate to take the necessary steps to protect your valuable invention. After all, your innovative ideas are worth the effort. If you have an invention you want to protect with a patent or have any questions about the patent process, schedule a consultation with Nolan IP Law now.
Dr. Jason Nolan is a registered patent attorney and former patent examiner who specializing in the prosecution of patent applications before the USPTO. He serves clients in the U.S. and internationally, providing personalized, professional legal support to individuals and businesses seeking patent protection.
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