What is a smarter way to respond to multiple Office Actions?
If you haven’t figured it out already, you’ll soon learn that your utility nonprovisional patent will encounter rejections. In fact, multiple Office Actions are common in utility patent applications. When you receive either a non-final Office Action or Final Office Action, is a response your best option? When should you consider smarter alternative strategies for responding to these rejections?
So here’s an unconventional approach. Instead of responding to the Office Action, what if you file a CIP application to add new matter? Why? Because a CIP application enables you to add new details that can then be claimed. Let me explain.
Responding to an Office Action With a Short Specification
Our firm receives a fair amount of inquiries from potential clients who had someone else write their patent application. Occasionally, the potential clients wrote the patent application themselves. In these situations, we typically see a scant specification. Many details are missing which makes it difficult to respond to an Office Action since there is insufficient support for the claim amendments that would be more effective. It’s a classic example of you get what you pay for.
Here’s the problem. If we were to attempt an Office Action response, the bare-bones specification gives us few options for claim amendments. We have to play with the hand we’re dealt, and it’s often a lousy hand. Filing a CIP gives us a new hand with better cards because we can add new matter to the specification. As explained below, the caveat is that newly added subject matter will get a later filing date.
Can you pay more USPTO fees responding to an Office Action than filing a CIP?
A Final Office Action typically requires you to file a Request for Continued Examination along with your response. For a small entity, USPTO fees for an RCE are $544 for the first request and $800 for subsequent requests.
So the government fees for a first RCE are almost as much as those for a CIP.
What are drawbacks to filing a CIP instead of an Office Action response?
If a CIP is so great, why not do it everyone time you encounter a difficult Office Action?
First, you might not have any substantial new matter to add. If you’ve received multiple Office Actions, chances are that your claims have been rejected under Section 103 as being obvious over the prior art. So any new content being added and claimed must be nonobvious.
Second, newly added subject matter gets a later priority date. For example, if your original patent applications discloses A and B, and you file a CIP to add C. While a claim for AB would get the earlier priority date, a claim for ABC would get the later filing date of the CIP. And a later priority date means more available prior art references that can be cited against. If your parent application was filed in 2018, for example, while your CIP was filed 2022, then examiner may use prior art dated after 2018 and before the 2022 filing date.
When must a CIP be filed relative to the OA deadline?
The parent application with the outstanding Office Action must be pending in order to file a CIP. One option is to file the CIP within the 3-month extension-free deadline of your OA. If you need more time, then file a request for the required number of extension months in the parent application and then file your CIP.
Need a smarter approach for responding to an Office Action?
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