A patent examiner may reject your patent application and may cite prior art references in an office action in view of which the claims may be considered non-patentable. Your patent application may be very well drafted but if the response (arguments and amendments) to the office action are not handled carefully, you may end up not getting the patent even for an invention that could otherwise have been patentable.

What is an office action?

An office action is an official communication from a patent office such as the USPTO to a patent applicant. A patent examiner may issue several different types of official letters about your application such as to notify about deficiencies in the patent application. A notice with a time limit is sent to the applicant so as to correct the deficiencies. These deficiencies may pertain to such as non-patentability of the claimed matter on the grounds of novelty, obviousness, utility or because of non-patentable matter being claimed (statutory classes). Examiner may cite prior art references in view of which the patentable claims may be considered non-patentable. Other types of notices may also be issued to the applicant by the office.

Responding to an office action / rejections over prior art

Most replies to Office actions must be sent within 6 months from the mailing date on the Office action by the applicant. Office actions usually provide a shortened period within which a response can be filed without having to pay extension of time fees. This is usually a 2 or 3 month period.

A typical response for an office action involving rejection of the claimed matter may involve a remarks section and claims amendment. The applicant argues why the rejections may be inappropriate and/or explains about mended claims and why amendment overcomes prior art rejections. The amendment section lists the amended claims if the applicant decides to make changes in the claims in view of the prior art cited by the examiner.

Some inventors and startups or small organizations receive a first rejection of their patent application. They feel as if it is the end of the road for them and that their entire funds spent in the patenting activity were wasted. However, at least for the first rejection, this is not so. Most patent applications receive one or more rejections (office actions).

Why Maxinov?

Your patent application may be very well drafted but if the response (arguments and amendments) to the office action are not handled carefully, you may end up not getting the patent even for an invention that could otherwise have been patentable. You might lose all your protection rights over the technology. It is now a public property to use, develop, sell, commercialize.

Maxinov Patents Team is equipped with necessary technological capabilities and patent expertise and has responded to close to 150 office action responses for USPTO and other jurisdictions. Whether it is about complex rejections after Bilski v. Kappos verdict in 2010 or Alice rejections after Alice Corporation v. CLS Bank verdict or more recent verdicts, our team has handled office action rejections successfully leading to a patent grant. Responding to an office action requires patent expertise, familiarity with the technology, and several years of preparing patent drafts. Maxinov team has all this.

If you are trying to respond to the office action without the help of a patent specialist, then you need to be careful that you do not amend the specification or the claims or make arguments that will unduly narrow your claims so that they would be easy to design around.

More reasons why our clients trust us in our approach of preparing office action responses are:

  • 8+ years of business in patent preparation and prosecution
  • Our team has experienced persons of over a decade of experience in handling patent prosecution matters.
  • Successfully delivered more than 150 office action responses.
  • Low costs – we help you save as much as 70% of the costs you would otherwise have to spend on patent matters.
  • Our unique blend of technology expertise and patent experience help us deliver the highest of the quality standards in IP industry.
  • We have a strong team who understands the technology. Our technology capabilities range from life sciences (pharma, biomed, medical tech) and mechanical structures and machines to electronics, computer sciences and engineering, healthcare IT, 3D printing, blockchain, 5G, IoT and other hi-tech innovative technology sectors.
  • We are partnered with US, EPO, and Indian patent attorneys.

Browse Services