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What are Patent Office Action and how should you respond on it?

When you are finally done with your invention and then your patent is on file. The United Patent and Trademark Office not only wants you to give you a patent but you have to face the office action regarding Office Action. You have to work past the office action patent rejection by making your case to the examiner. The work to make a good office action response starts before you even file the patent application.

What is an Office Action?

An office action is a formal response to your patent application from the patent office. An office can require different kinds of responses from the inventor. US Patents require absolute novelty, no one ever has invented, published or presented your invention. Knowing how to make sure you have got absolute novelty starts before you even file a provisional patent application with a good patent search. You have to know what other inventors, engineers, and companies have said in the field of your invention. A good patent search produces few results that help you explain what is novel about your invention by showing what others have done.

For example, you are changing your millionth diaper and regretting your decision to use cloth diaper. The covers that you put over the cloth diapers always leak around your son’s legs. All the plastic pants you snap over the cloth diapers aren’t flexible around his legs. Inspired, you sketch a design that will extend further down the babies’ legs and cover the thick cloth diaper – it can’t fail. You search online and find that no cloth diaper covers use such a design.

When you file your patent include all references to all of the plastic diaper covers that you found. They tell the story of the invention, no one thought to extend the diapers cover to cover leak.  The examiner will then conduct his or her own search. If you have already shown the examiner results that you think are relevant, it will help them avoid a search that comes up with irrelevant results.

But if you get an office action after two years.The examiner rejected all your claims because they found a catalog that showed a disposable diaper with extended legs. The office action forms a basis for patent rejection it will cite the patent or publication that proves your invention is not novel and make the argument why it is too similar to your invention.

Office Action Response

At the end of every patent is a numbered list of the sentence that describes what part of invention you claim is yours. A claim is most valuable and important part of the patent. It is the part of the patent that infringers infringe. It is exactly what the investor owns. The patent process is a negotiation. Most lawyers file the first set of claims that that is broader than the inventor needs. The examiner will always reject the first set of claims and then work with the inventor to find a middle ground. You have to negotiate and your office action response is the continuation of the strategy you started when you filed your patent.

In case your of your diaper invention, you read through the original claim and realize you did not specify that the invention was for cloth diaper covers. Your claim is for a diaper with extended wings covering the legs. The examiner makes a point that disposable diapers had already made a similar invention. Maybe you can get around the Office action if you limit your claims to cloth diapers. There is a really good way to find out.

Examiners leave their contact information at the office action. Email the examiner and ask to schedule an interview. Inventors allow inventors or their attorney, to ask the examiner questions. The patent office is very very busy so plan on scheduling the interview for a few week in future. Avoid the habit of complaining. Interviews are also great opportunities to test and see if the examiner is willing to compromise. It is the duty of the USPTO to ensure that every design patent, utility patent and any other intellectual property given in the name of the government is worthy of an issued patent.

By |2018-01-25T16:58:27+00:00January 25th, 2018|IP Basics|0 Comments

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