Before we get into Singhwal’s diligence and services regarding Office Action, a short idea about Office Action is presented below. When a patent is filled and forwarded for examination of its validity, the Examiner at the patent office checks for its eligibility and formal attire as per law of each jurisdiction. After which a preliminary judgment is passed which is called FER or First Examination Report which may be seeking for any kind of rectification or amendment, or directly giving out rejections if the application deems to be not fit and eligible. After which the patent attorney, or agents shall prepare a response containing arguments, explanations that may be contrary or accommodating the examiner’s needs as per the cases required which is also called Office Action Response.
Finally after a number of office actions and replies the examiner will come to a judgment over the patent application. Same events take place during pre and post grant opposition of a patent but the office actions is conducted by 3 entities, the applicant, the examiner and the opposition filing party. Singhwal prosecutions treat office action very seriously as it is the most important part of the prosecution of an application.
An application may be very well drafted but if the arguments to the office action are weak it could ruin a potential innovation’s protective rights. Our practitioners are technically strong and trained to craft technical arguments based on the laws guided by patent laws around the globe.
Steps involved during a Technical Argument include:
Identifying whether a claim set needs to be amended or the arguments shall be based on original claim set. If applicant prefers for amending the claim set, an appropriate amended claim set is generated and approved by the client. Further, differences between amended or original claim set, as the case may be, and the cited arts is charted out. Before any step, it is generally advised to double check whether the cited art predates the patent application filing date or not.
An examiner is generally not expected to make a mistake over this point, however it is always good to keep this in check. Further, preparing arguments based on the technical differentiation with respect to prior art pointing specifically towards Novelty and obviousness aspects. Novelty is a subject of facts and arguments are based on eye to eye analysis, however for Obviousness arguments are generally based on point of law which is more less about determining difference between the prior art and claims, whether the prior arts and the differences in combination reaches to the invention, and whether the documents cited by the examiner can be combined by “a person skilled in art”.
Obviousness is generally debated at each point of scrutiny whenever it is called for at Patent Office, at Appellate Board or in Court of law, and each time the scrutinizing authority may reach to a difference answer. Doing such a technical study and exploration helps out immensely to draft an appropriate legal response to an office action.
A response to office action includes explanation/ arguments and/or amendments to the claims. The explanation by the agent/ applicant supports the patentability of the invention in order to convince the examiner. In case, the applicant would like to amend the claim then he has to provide explanation that how the amended claim overcomes the rejection and patentable over the cited objections. At the time of claim amendment, the applicant has to cite the support for the amendment he has done in the office action. This is necessary because, the examiner usually ensures that no new matter was added during the prosecution.
During the office action, additional evidence can be produced before the examiner. For example, declaration from the inventor can be submitted by giving explanation to the rejections by the examiner. The declaration may include how the invention is novel, not obvious to the person skilled in the art, unexpected result and experimental results to show improvement or advantages of the invention over the prior art. The declaration has to be prepared in the supervision of patent attorney or agent in order to avoid any unintended mistake by the inventor. This is because, declaration possess higher weightage in the office action and based on that examiner grant the patent in most cases. In addition to declaration submission, the other factors such as long felt need of the invention and commercial success can also be presented during the office action to successfully convince the examiner.
Office action response drafting are non-technical components, however, legal, of an office action that is made into a base document providing the patent prosecutor a head start to drafting a detailed office action response. Also a template is followed to begin drafting a response that keeps things accurate, fast and efficiently punctual. Drafting specifically to a jurisdictional requirement or client-specific needs. Drafting an argument using technical supported points in particular to an office action objection/rejection and references cited in it. Drafting amendments (changes to the claims and description of the application) if needed to support an argument or meet the patent office needs.
Distinguishing formal and informal objections, wherein formal objection may be related to the subject matter of the application in accordance to the patent laws, whereas informal objection may be related to the rules and regulation formalities of a Patent Office and making alterations accordingly. To identify unity of invention, wherein an application may have only one novel subject matter otherwise another application may be filed for each new subject matter.
Anticipating this and filing other application in prima facie and saving client’s time and money. Drafting responses during Post Opposition i.e., after patent grant prosecutions, which includes expertise and experience of litigation areas. Keeping in touch with the client and inventors at all times and taking feedback as a proactive activity.
Singhwal’s experts have been gaining experience of to work over hundreds of matters and have completed and solved most of their pre grant prosecutions on an average of 1-3 responses. Things that need to be considered and focused during an office action can become very technical or just plain simple legal formality compliance issue.
Singhwal follows the usual process during a technical analysis for an office action response starting with the jotting down of all the objections given by the examiner, after which a process of solutions are orchestrated solving each objection one by one and in a specific order so that it may reduce work and increase efficiency. The standard process is to conduct a claim chart whenever a prior art is cited by the examiner, here we compare the elements that our application is claiming against the cite arts.
Doing this prepares us with knowledge of what the examiner has been focusing from our application, and what are the similarities that has been shown by the cited prior art. Next step is to see if there is a way we could turn around the claim just enough to overcome the similarity but not change the invention’s main focus with the inventor’s or assignee’s consent. Accordingly, Singhwal also rechecks for the novelty, obviousness and other patent laws restriction along with the cited prior art, and provide an argument or explanation on the basis of laws and trying to convince the examiner that it is a legit application. However, of course when things are just wrong we go for amendments and change the language or formal aspects of the application.
Formal objections are the ones wherein the attire of the application may not be in sync with the regional patent office requirements and these are rectified at the earliest. Other things that are monitored during an office action of an application, is to make sure the unity of invention exist after all the amendments, arguments and explanation is provided.
Because when the unity of invention is hampered, as in there is an impression of 2 inventions collaborated and tried to be protected by one patent it will receive an objection or rejection that can be over-come by a division of patent or create additional patents altogether. The unity can be determined by the understanding of claims.
Finally drafting for the response can be initiated after confirming the final technical analysis, the arguments and amendments (changes to the previous version of application). They are then listed out. The drafting is compiled to be compatible with all the formal attire, requirements as per the receiving patent office. Drafting response can be tricky as every receiving patent office have few changes done to their formal requirements, also their rules and sections numbers are different which needs to be mention every time an argument is being passed.
Convincing the examiner in order to overcome the rejections and at the same time maintaining scope of the claim broadly are difficult tasks. The amended claim might be acceptable by the examiner as it is novel and inventive over the prior art, however the scope is very limited and hence the granted claim is easy to circumvent by third party. Claim amendment and any explanation / statement during the office action establish prosecution estoppel. This will harm the applicant not to claim their right over the omitted feature or element in the claim during the infringement action. Therefore, applicant must seek help from professional patent attorneys. The patent agent and attorneys at Singhwal have vast experience in prosecution and the impact of response provided during the prosecution in real time situation.
The patent attorney must closely work with the client during the office action in order to understand the claim which is to be prosecuted first in view of the business need. Also, the attorney must ensure that the amended claim certainly cover the client’s product or process or technology.
In case of opposition there will be a three way transaction which happens between the patent office/ appellate board, the patentee and opponent. This is also similar to typical office action, however herein the patent applicant has to overcome the objections raised by the opponent and convince the examiner/ appellate board. In patentee’s perspective, he has to show how the invention is novel, inventive and patentable over other grounds raised by the applicant. In opponent’s perspective, since the patent office construct the claim in broadest reasonable standard it is easy to challenge the claim before the patent office. Hence, it is recommended to work with expert who has been dealing with patent opposition in order to defend their respective case.
Hence Singhwal follows a tight process when it comes to office action, where every possible help is acquired from technical (Patent agents, inventors, analysts) and legal experts (Patent agents, patent attorneys) to maximize the opportunity of getting the office action cleared and receive a grant over the patent or excel during opposition issues. The process of claim charting, monitoring the novelty, obviousness and other restriction become the part of technical analysis, whereas claim amendments and arguments are put on the paper by the legal expertise backed by the technical analysis. Our experts work hand in hand with client to understand their business need and successfully handle the office action accordingly. Our experts always ensure that there is no prosecution error such as estoppels and leaving any feature of the invention without claiming during the office action. Our experts respond to the office action on time thereby avoiding extra cost associated with extension of time. Also, our experts have been successfully maintain track record in getting the patent granted in less number of office actions thereby avoiding high expense incurred for prosecution. The experts at Singhwal also handled number of pre grant and post grant oppositions before USPTO, EPO and IPO and represented both patentee and opponent.