Office Action cost range: from simple to complex responses

The cost estimate of responding to an Office Action in a utility patent application will depend upon the simplicity or complexity of the issues raised by the patent examiner.

What is a simple Office Action response?

A simple Office Action response is a reply that omits arguments, such as arguments regarding subject matter eligibility or allowability over the prior art. Such a simple response would be appropriate in the following situations where the Office Action:

a. identifies allowable claims or allowable subject matter; or

b. only objects to the claims as being “indefinite” under 35 USC 112.

In the first scenario, an appropriate response would be to take the allowable claims. The non-allowable claims can either be deleted or modified to include allowable subject matter.

In the second scenario above, the claim language can be cleaned up to correct any indefinite language. This is a fairly straightforward task that a patent practitioner can do without requiring input from inventors.

How much does a simple Office Action response cost?

A simple Office Action response as described above would cost under $1,000 at my firm. The main reason for the lower cost is the absence of arguments.

What is a complex Office Action response?

A typical non-final Office Action in a utility non-provisional patent application will include claim rejections based on prior art found by the examiner. These claim rejections are based on either Section 102 (novelty) or Section 103 (obviousness). If utility patent application covers software or a business method, the Office Action may also contain rejections under Section 101 (eligibility).

Here are factors that increase the cost of an Office Action response:

  1. Does it appear that claim amendments and arguments will be required to overcome any rejections?
  2. How many prior art references are cited?
  3. How many independent claims need to be amended or argued?
  4. Does the specification adequately disclose the features to be added to the claims?

The cost of a complex Office Action response ranges from $1,500 to $3,000 at our firm.

Are drawing corrections required?

Illustrator fees for revising patent drawings are relatively nominal in comparison to attorney’s fees. However, an illustrator’s turnaround time may be a factor so you’ll want to plan ahead and get your illustrator to revise the drawings well in advance of your response deadline, or plan on extensions of time.

How many Office Actions should be expected?

Most patent applicants hope that a single Office Action response would prevail over all rejections and lead to an allowance. Unfortunately, the typical utility non-provisional application will often lead to multiple Office Actions.

Multiple Office Actions may arise for several reasons:

  • the patent examiner finds new prior art in response to claim amendments;
  • anticipation rejections morph into obviousness rejections;
  • obviousness rejections appear to be based on the examiner’s subjective views

After multiple Office Action responses, a decision needs to be made about whether it would be worthwhile to continue the fight. If so, an appeal may be the most sensible option if no further claim amendments can be pursued.

Are patent Office Action responses typically included in the initial filing estimate?

No, most US law firms do not include Office Action responses in the initial filing estimate of a utility non-provisional patent application. In fact, you should be wary of any firms that do because such an estimate might suggest that the claims are being narrowly written in the first place to avoid Office Actions.

The following two tabs change content below.
Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.

Leave a Reply

Your email address will not be published. Required fields are marked *