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. Multiple Office Actions are common in utility patent applications. While it’s normal to respond to the first non-final Office Action, what do you do when you get a Final Office Action or even further Office Actions beyond that? When do you start considering alternative strategies for a smarter Office Action response?

So here’s an unconventional approach. What if, instead of responding to the Office Action, you file a CIP application to add new matter? Why? Because a CIP enables you to add new details that can then be claimed. Let me explain.

Responding to an Office Action with a limited specification

Our firm receives a fair amount of inquiries from potential clients who had someone else write their patent application. Sometimes, we see a skimpy specification without sufficient detail. It’s a classic example of you get what you pay for.

Here’s the problem. If we were to try to prepare an Office Action response, the scant specification gives us few options for claim amendments. We have to play with the hand we’re dealt, and it’s a lousy hand. Filing a CIP gives us better cards because we can add new matter to the specification.

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 more than one 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 to file a smarter Office Action response?

Reach out to US patent attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you craft a smarter way to respond to your Office Action.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. We have helped clients obtain 700+ granted patents, 500+ registered trademarks and countless foreign IP registrations. Let's get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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