Patent Office Action Response Quiz
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1.
Look on the front cover of your Office Action. Was the mailing date of your Office Action within the last six months?
If your answer is yes,
That’s great. You have a maximum of 6 months to respond to an Office Action from the U.S. Patent and Trademark Office. If you respond within 3 months of the mailing date of the Office Action, no extension fees are required. If you respond after 3 months, but before the end of 6 months, then you can file a response to the Office Action but need to pay extension fees at the time of filing.
If your answer is no,
That is unfortunate. You have a maximum of 6 months to respond to an Office Action from the U.S. Patent and Trademark Office. If you respond within 3 months of the mailing date, no extension fees are required. If you respond after 3 months, but before the end of 6 months, then you can file a response to the Office Action but need to pay extension fees at the time of filing. However, you indicated that your Office Action was mailed to you more than 6 months ago. What can you do about that? You probably need to consult with a patent attorney in your city/area to determine whether you can file a Petition to Revive your patent application for unintentional abandonment or unavoidable abandonment. Alternatively, Patent Express can help you as well fill out the right forms by yourself for a $300 fee. You can contact us to get more information on this by emailing us at:
customer.service@patentexpress.com.
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2.
In the Examiner’s comments in the Office Action, are there ‘102’ novelty based rejections?
If your answer is yes,
Ok, we can deal with 102 rejections. The
102 novelty based rejections means that the U.S. Patent Office has found a prior invention that discloses each and every element of your independent claims. The 102 rejections are the most difficult type of rejection in the office action to overcome. Don't worry! Patent Express gives you the knowledge and tools to overcome this type of rejection yourself. The basic strategy revolves around finding at least one element in your independent claims that is not disclosed by the prior invention cited against you in the 102 rejections. To do this, you are basically comparing your claims to the entire disclosure of the prior invention document. Sometimes, you may not find anything different in your independent claims. Then, you may need to narrow the scope of your independent claims by amending them, either by using dependent claims or other things in your specification.
If your answer is no,
That’s great. The
102 novelty based rejections means that the U.S. Patent Office has found a prior invention that discloses each and every element of your independent claims. The 102 rejections are the most difficult type of rejection in the office action to overcome. It is great that you don't have a 102 rejections in your case.
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3.
In the Examiner’s comments in the Office Action, are there ‘103’ novelty based rejections?
If your answer is yes,
That’s fine. We can deal with that. A
103 obviousness based rejection means that the U.S. Patent Office believes that your claims are obvious in light of one or more cited prior inventions. Don’t worry! Patent Express arms you with the knowledge and tools to address this type of rejection. The good news is that the Patent Office has not found one single reference that discloses each and everything in the claims on which the ‘103 rejection is cited. Rather, they had to rely on a combination of multiple prior inventions to get to your invention. The basic strategy that Patent Express will recommend to you is to find at least one thing in your independent or dependent claims that is not disclosed in all the '103' references cited against you. Patent Express also recommends a number of additional advanced techniques for you to consider getting around this type of rejection.
If your answer is no,
Good. A
103 obviousness based rejection means that the U.S. Patent Office believes that your claims are obvious in light of one or more cited prior inventions. It’s good that you don’t have this type of rejection in your Office Action.
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4.
Can you identify which claims are independent and which ones are dependent in your patent application?
If your answer is yes,
Ok, great. Basically, when addressing this Office Action in your response, start off by analyzing your independent claims. Knowing which claims are independent and which claims are dependent is the first step in addressing an Office Action.
If your answer is no,
Don’t worry. Knowing which claims are independent and which claims are dependent is the first step in addressing an Office Action. Patent Express will teach you how to identify which claims are independent and which claims are dependent. Claims are found at the end of your patent application. They are single sentences which identify what you exactly have claimed as your invention. Claim 1 is always independent because it does not refer to any previous claims. Claim 2 is often dependent because it refers back to claim 1 and incorporates everything within that claim.
Disclaimer
The information provided in this site is not legal advice, but general information on legal issues commonly encountered. Though started by attorneys, Patent Express is not a law firm and is not a substitute for an attorney or law firm. Patent Express cannot provide legal advice and can only provide self-help services at your specific direction. Please note that your access to and use of PatentExpress.com is subject to additional terms and conditions.