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On Office Actions

On Office Actions. and how to respond. Jonah Probell jonah@probell.com not an attorney. Rejection. Don’t give up. You can still get the patent. Only you decide when the examination process is over. (You and your wallet). Negotiation. Office actions and responses are a negotiation

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On Office Actions

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  1. On Office Actions and how to respond Jonah Probell jonah@probell.com not an attorney

  2. Rejection Don’t give up. You can still get the patent. Only you decide when the examination process is over. (You and your wallet)

  3. Negotiation Office actions and responses are a negotiation between the applicant and the examiner. If your first office action has no rejections then you should have written broader claims.

  4. Humanity Examiners are human. They make interpretations. They make mistakes. They have feelings. Some are even lazy.

  5. Be thorough When you file a response, make sure to respond to every point raised by the examiner. If you spend 10 days preparing a careful response to a 102 rejection, do not forget that the examiner also had a small objection about a missing comma. I once had an examiner forget to examine new claims that I had added. They get in trouble, too, for not being thorough.

  6. Be polite Even if your examiner is an ignorant idiot, respond as if your examiner is as smart and knowledgeable as you are. Be respectful and polite. The examiner holds the key to your fortune and business prospects.

  7. Be firm Prior art must be enabling to be anticipatory. Study cited prior art thoroughly and carefully. If the prior art clearly does not enable a PHOSITA to implement an aspect of your invention, explain so. Often examiners cite prior art that has the same keywords, but they have a different meaning in the context of their field.

  8. Be flexible Consider the examiner’s points carefully, and be willing to amend your claims, even if you feel that you shouldn’t have to. You can usually amend your claims in a way that satisfies the examiner but still effectively blocks your competitor. Such an amendment lets you win and the examiner win.

  9. Pick your battles Think about all of your claims and which ones are truly important. Years will have passed since you first drafted the claims. Keeping things in perspective will let you focus on redrafting the claims to cover what is really important.

  10. Threaten if needed If the examiner incorrectly refuses your claims in a way that you can not afford to concede then first file a pre-appeal brief. That is a warning to the examiner that you are prepared to go over their head, and often wins you concessions. Appeal only if absolutely needed. Work with an experienced attorney or agent if appealing.

  11. Continue if needed You usually get two rounds of examination, at which time the examiner declares the decision final. File a request for continued examination (RCE) to continue arguing if you need further rounds of consideration.

  12. Add claims Upon a final rejection, consider adding new claims in a continuation application. • New claims can: • Target new competing products • Use different wording to address examiner demands • Claim material from the specification that you had not • previously claimed.

  13. Thank You Jonah Probell jonah@probell.com This presentation is available at: probell.com/office_actions.pps

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