Analyzing and Answering Office Actions During Patent Prosecution

The patent rules are direct: all business with the Patent and Trademark Office should be transacted in writing. The USPTO's side of the transaction is mostly writings called Office actions. An Office action is the vehicle that a patent examiner uses to convey objections to an application's form, rejections based on novelty, obviousness, and other bases, and sometimes a broader view of the merits of the application generally.

Some might think that answering an Office action is straightforward. That is, you read what the examiner said and then answer it. But it is not always apparent what you're answering, nor is it always clear what the best answer is. Moreover, the Office action takes part in a broader context, which can extend beyond prosecution itself - the best answer to a rejection may depend on more than the best argument against the examiner's cited prior art.

This course is aimed at the beginning patent practitioner who wants to do a better job of handling Office actions. Covered topics will include:

• Recognizing the different ways in which clients want you to approach Office actions

• Reporting Office actions appropriately

• How to approach initial analysis of the Office action

• Responding to objections based on formalities

• Recognizing common connections between objections and rejections

• Tips for responding to rejections under Sections 101, 102, 103, and 112

• How the examiner can be more of a partner and less of an adversary

• The kinds of issues that examiner interviews are most likely to help with

• What to do after a response is filed

Learning Objectives:

1. Analyze an Office action in the appropriate context

2. Review the best approaches to responding to the different kinds of issues that examiners raise

3. Recognize when an examiner interview is likely to advance prosecution and also when it isn't