For pending patent applications, office actions are commonly sent by the U.S. Patent & Trademark Office (USPTO) rejecting and/or objecting to aspects of the application on the merits. The applicant must respond to an office action within a certain response period in order to avoid abandoning the patent application. The back-and-forth communications between the USPTO and the applicant is called “prosecution”. Nearly all U.S. patent applications receive at least one office action. Yet most applicants are able to overcome the rejections/objections to obtain a patent. This means applicant responses to office actions are important in obtaining patents. But how should the applicant respond?
The best way to respond to an office action will vary for one case to the next. The most appropriate response strategy depends on the specific context. Generally, the following factors will influence how best to respond (if at all):
- Specific rejections and/or objections made in the office action
- Law and procedures governing the rejections/objections
- Scope and content of the patent application:
- current claims
- original disclosure of the applicant’s invention (support/written description)
- Applicant’s overall patenting strategy
In any situation, typical responses will consist of arguments or a combination of amendments and arguments. Any response that contains an amendment is called an “Amendment”. A response that contains only arguments can be called a “Response”, though the USPTO still classifies these as a type of amendment. Certain other types of information and accompanying filings, such as petitions, may also be submitted together with a response in some circumstances. Payment of official fees may also be required with a response, such as extra claim fees or extension of time fees.
The Specific Rejections/Objections
Not surprisingly, the appropriate way to respond to an office action depends on the particular rejections and/or objections being made. Though a compliant response generally needs to address all of the rejections and objections made in the office action. It is possible to informally group rejections and objections into three categories: (1) prior art-based rejections; (2) eligibility rejections; and (3) formality rejections and objections.
Prior art-based rejections are ones that assert particular claims of an application are not patentable based on what was already known in one or more cited prior art references. These include rejections based on anticipation (35 U.S.C. § 102), also called lack of novelty, or based on obviousness (35 U.S.C. § 103). Whenever there are rejections made based on cited prior art, the applicant should consider what the cited art actually discloses, teaches, and suggests, and whether the office action accurately characterizes those teachings and disclosures. It is common for applicants to disagree with the patent examiner about the scope of the prior art. These are often factual arguments about what was or was not actually known in the prior art.
Eligibility rejections deal with questions of whether the subject matter of the invention is eligible for patent protection. These usually pertain to the utility requirement for utility patent applications (35 U.S.C. § 101). Though design patents (35 U.S.C. § 171) and plant patents (35 U.S.C. § 161) have different eligibility requirements. Abstract ideas, natural phenomena, and laws of nature are not patent eligible in the USA. Eligibility/lack of utility rejections tend to be most common for certain types of technologies, such as software-implemented inventions, methods of medical diagnosis and treatment, etc. Responding to these rejections can often be challenging.
Formality rejections are ones that generally deal with the form of the patent application. These are very often about the procedures and technicalities that applicants must comply with. These include rejections based on indefiniteness or lack of enablement (35 U.S.C. § 112), and objections to the drawings or specification or for informalities like typographical, spelling, or grammatical errors in the claims. Formality rejections are sometimes cured through corrective amendments, though they can also be argued sometimes.
Applicable Law and Procedures
Office actions are prepared by patent examiners who must follow the patent laws, and interpretations of those statutes by courts, as well as USPTO regulations and procedures. In general, patent examination in the U.S. follows the guidance and procedures set forth in the Manual of Patent Examining Procedures (MPEP). The MPEP is usually the first place to look for guidance about the legal standards and procedures that a patent examiner is supported to follow.
Any rejections or objections set out in an office action must comply with applicable law. Applicants will often disagree with an examiner about legal requirements to sustain a rejection. It is common for applicants to argue that an examiner has not met his or her burden to reject a particular claim of a patent application. These are often legal arguments about what the law requires (or does not require).
Scope and Content of the Patent Application
A suitable office action response will depend on what is recited in current claims and in the original disclosure (specification) of the application. Any office action will have been based on the way the applicant’s invention is disclosed and claimed. The way that the applicant has presented the invention in the application can vary a lot. Applicants have a lot of discretion in how they do so. This means the application itself is an important starting point in determining how best to respond to the office action.
The claims of the application recite the scope of the exclusive legal rights sought in the invention. That is, the claims define the invention sought to be patented. Applicants can usually amend the claims to adjust their scope and format. New claims can also sometimes be presented. Narrowing amendments might be made distinguish the claimed invention from cited prior art, for instance. Or clarifying claim amendments might be made to resolve formality rejections or objections. The implications of claim amendments can be significant. Narrowing amendments reduce the scope of exclusive rights in any resultant patent. And amendments can also result in prosecution history estoppel, which limits the interpretation and scope of enforceable rights. But the key is that the claims can potentially be amended in order to overcome rejections and/or objections.
The rest of the patent application (or specification) is significant in terms of how it discloses the invention. For instance, there may be explicit definitions of certain terms used in the claims that are implicated by a rejection in an office action. Also, the scope of the original disclosure (the “written description”, which includes any drawings) is in most respects fixed at the time the patent application was filed. An applicant cannot add “new matter” to the application after filing. This is often important because any claim amendments must have support in the original disclosure. An applicant cannot try to avoid cited prior art by amending the claims to recite something “new” that was not originally disclosed. So the original application constrains what sorts of later amendments are permitted.
Applicant’s Patenting Strategy
Lastly, the applicant’s overall patenting strategy will play a major role in how best to respond to an office action. These are often questions about what claim scope the applicant desires and what scope the applicant is willing to accept or settle for.
For example, business objectives are important. A patent application might disclose multiple possible embodiments of an invention with different configurations, features, etc. Some of those things might be merely optional or have been omitted from commercial versions of the invention. While certain response strategies might result in allowance and grant of a patent, any that depart from the embodiment(s) of the invention that the applicant is actively commercializing might have limited practical value. The relationship of a given application to other pending applications or granted patents, if any, can also be significant. As can the potential for a further, related (continuing) application.
There may be timing considerations too. Sometimes an applicant wants to obtain a granted patent as quickly as possible. Alternatively, it may be desirable to slow down patent examination to allow time to determine which disclosed embodiment of the invention seems the most commercially viable.
Additionally, the applicant’s budget and available resources can play a significant role. Official fees and attorney fees associated with further pursuit of patent protection can be significant. Applicants usually desire to have broad exclusive patent rights in their invention. But broad claims are often much harder to obtain. There is frequently greater effort and expense involved in pursuing broad claims, which is why applicants might settle for narrower claims. On the other hand, there can be long-term cost savings associated with maintaining a single patent rather than multiple patents, which might suggest making a more robust response to try to avoid additional patent filings. In short, budget constraints and business considerations will sometimes influence the way an office action response is prepared aside from the merits of the case.
There are many—sometimes competing—factors that will influence how to respond to a patent application office action. There is no one right way to respond. The most appropriate response strategy will take into account the many different considerations, backed by knowledge of the applicable law and procedures as well as an understanding of the technology involved with the invention. The overview given here is really only a basic introduction. Other options may be available in specific situations that are beyond the scope of this introduction. Given the complexity of patent law a patent attorney will generally be aware of the full range of options and can advise about specific cases.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.