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 complexity of the issues raised by the patent examiner.
What is a simple Office Action response?
A simple Office Action requires a reply without arguments. Simple Office Action responses need not include arguments regarding subject matter eligibility or allowability over the prior art. Simple responses 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 and contains no rejections based on prior art.
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. Prior to the grant of the application, a continuing application may be filed to pursue broader claims.
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 patent Office Action response cost?
A simple Office Action response as described above would cost under $1,000 at my firm. The lower cost can be attributed to the absence of arguments and analyses of prior art references.
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 you are trying to patent software, the Office Action may also reject your claims under Section 101 (eligibility).
Here are factors that increase the cost of an Office Action response:
- Will claim amendments and arguments be required to overcome the rejections?
- How many prior art references are cited?
- Are the grounds for rejections based on novelty, obviousness or eligibility?
- How many independent claims need to be amended or argued?
- Does the specification adequately disclose features to be added to the claims?
How much does a complex patent Office Action response cost?
The cost of a complex Office Action response ranges from $1,800 to $2,800 at our firm, not including USPTO fees.
If an Examiner Interview is advisable, expect another $600 for conducting the interview and reporting results thereafter.
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?
Ideally, a single Office Action response would prevail over all rejections and lead to an allowance. The typical utility non-provisional application will lead to multiple Office Actions.
Why? Multiple Office Actions may arise for several reasons:
- the examiner finds new prior art in response to claim amendments
- anticipation rejections become obviousness rejections after your claim amendments
- obviousness rejections appear to be based on the examiner’s subjective views
- the examiner does not understand or accurately interpret your claim amendments
- the examiner misconstrues the prior art
- your claim amendments do not sufficiently distinguish over the prior art
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 nonprovisional 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.
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