Will arguments be necessary in your utility patent application? Nine out of ten utility patent applications will get rejected at least once. Many will get rejected multiple times. So, yes, arguments will be required in the vast majority of utility patent applications. Moreover, the strength of your argument will have a direct bearing on whether […]
Articles Tagged: office action response
Smarter Trademark Response: What are more effective ways to respond to a trademark Office Action?
What are smarter ways to respond to trademark Office Actions? Though you hate to see them, Office Actions are fairly common in USPTO trademark applications. While much can be done upfront to minimize the risk of a trademark refusal, you sometimes get a trademark rejection no matter how hard you tried to avoid it. If […]
Smarter Office Action Response: File a CIP and skip OA?
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 […]
What does a successful patent Office Action response look like?
What makes for a successful patent Office Action response? When it comes to responding to patent rejections, you have essentially two weapons. First, you can amend the claims. Second, you can argue against the claim rejections. A successful patent Office Action response typically involves a combination of claim amendments and technical arguments. This is a […]
What are claim amendments?
What are patent claim amendments? Claim amendments are a natural part of the utility patent process. A typical utility nonprovisional patent application will receive at least one Office Action rejecting the claims. It is highly likely that your Office Action response will contain a combination of claim amendments and arguments in order to overcome the […]
How much does a patent Office Action response cost?
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 […]
Amended claims: What can go wrong in a patent amendment?
When are marked-up amended claims not required? Patent claims must be amended in a very particular manner. The USPTO has strict marking rules on how amended claims must be shown with respect to prior versions. The format of amended claims are generally called “marked-up” claims. There is no need to show marked-up claims in the […]
How To Respond To Patent Office Action
What does it take to respond to a Patent Office Action? Since the probability is high (approximately 88%) that a utility nonprovisional patent application will be rejected at least once, the issue is not if, but when and how you will need to respond to a patent Office Action. If and when that Office Action […]