How to Review a Draft Office Action Response Roughly 90% of utility patent applications will get rejected at least once. When it comes to utility patent applications, rejections come with the territory. The question is not if you get rejected, but when you get rejected. Expect at least one Office Action in your nonprovisional patent […]
Articles Tagged: patent office action response
What is a patent specification?
What is the purpose of a patent specification? The specification of a patent serves a different purpose than that of the claims. Whereas the claims define the legal scope of protection, the patent specification describes the invention and provides support for the claims. In a utility patent, the specification includes the drawings and the written […]
How to analyze prior art in Office Action
Prior art cited in patent Office Action When prior art is cited in an Office Action to reject your claims, the typical reaction of applicants is a generalization of how their invention is different. That may be true. A persuasive Office Action response, however, will require a deeper analysis of the prior art. So you […]
What is the probability of getting a utility patent?
What is the utility patent probability of success? It’s no surprise that utility patents are substantially harder to obtain than design patents. What might be eye opening is that the probability of obtaining a utility patent is a function of time. As more time passes, the probability of getting a utility patent increases. Based on […]
What is an Ex parte Quayle Action?
What is an Ex parte Quayle Office Action? An Ex parte Quayle Office Action, or “Quayle Action” for short, is issued when there are minor issues to be resolved in a patent application that is otherwise in condition for allowance. Prosecution on the merits is closed, meaning that substantive examination has concluded. There are no […]
What is a supplemental amendment?
When is a supplemental amendment appropriate? As suggested by its name, a supplemental amendment is an additional reply to a patent Office Action. Supplemental replies should be filed only under the following circumstances: (A) Cancellation of a claim(s);(B) Adoption of the examiner suggestion(s);(C) Placement of the application in condition for allowance;(D) Reply to an Office […]
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 […]
What is a Patent Office Action?
What is a patent Office Action? After waiting one to two years (or longer) from the filing date of your utility nonprovisional patent application, you will eventually receive a letter called an “Office Action” from the patent examiner assigned to your application. The average wait time for the first patent Office Action varies between 15 […]
Is a Power of Attorney Required to File a Patent Office Action Response?
Is a Power of Attorney required to file a patent Office Action response? No, a power of attorney need not be filed in order to reply to a patent Office Action. 37 CFR 1.34 states that a patent practitioner acting in a representative capacity may sign a paper in practice before the USPTO in a […]