The Examiner at the patent office verifies a patent’s eligibility and proper formal attire as per law of each jurisdiction. The examiner also raises the objections on invention in the form of a preliminary decision which is known as “Office Action (OA)” or “Examination Report (ER)”, that may ask for any type of correction or change or may simply reject the application if it is deemed unfit or eligible. For that OA / ER, the patent attorney or agents must next create a response, which may contain arguments or explanations that are opposing or accommodating depending on the circumstances.
How to draft an office action response?
The following actions must be taken by the applicant’s attorney when creating an OA response for a patent application:
In first step, the applicant’s attorney must analyze the objections, mention prior-art patents or non-patent references, and compare them with the specification of invention.
In second step, the applicant’s attorney must prepare a strategy to remove the objections and rejections.
In third and last step, the applicant’s attorney should draft an office action response according to the objections and rejections.
Centriik’s approach in preparing Office Action Response
- Before making the office action response our team verifies dates of the prior-art references and quickly reviews the rejections and objections. The date of prior-art reference is used if the prior-art references are disclosed before the effective filing date of a subject patent application. We do not need to analyze the prior-art references if the date condition is not met.
- We identify the issue that needs to be resolved or the new technology being introduced by carefully reading the specification.
- We use the claims and the specification to identify the important elements of the patent application.
- Our team finds the similarity in the scope of a patent application or a granted patent across jurisdictions which are essential for litigation purposes.
- We analyze the office action and its stated prior-art references to check whether references have any dissimilarity that provides one or more ways to make the invention different from the prior art references.
- We analyze the prosecution history to get the details that were already presented in the previously filed response to avoid debating a feature that has already been discussed in earlier response.
- Our team drafts the response after finalizing one or more aspects to be argued in view of the analysis.
- We check the specification to see if all of the stated features are accurately mapped. The new subject matter must be connected to the invention’s solution component. It can be added in the claim set to draft the office action response (if required).
- All the response should under the different sections of different jurisdiction.