Is Patent Prosecution Tricky work? Prosecution is a stage that every patent application goes through and it takes 2-4 years before the application is granted. The process involves Examiner rejecting an application based on various parameters and the Applicant responds to the rejections and this process continues till the patent is granted by the Examiner. Each time when an office action is received, a formal response to the OA is prepared and filed with the patent office. And Preparing a formal response to an office action response requires technical and legal expertise to overcome objections /rejections raised in an office action. Quality of the response matters! Considering it is a specialized skill set, outsourcing patent prosecution work may be a question in client’s mind sometimes. We believe the chosen outsourcing patent partner can consider the following pointers for great success rate with the patent office such as USPTO. 1. Develop right understanding of the objection/rejections raised in an office action and multiple ways to overcome those. 2. Response preparation including amendments and arguments must be based on the type of OA (final or non-final) and previous history if any. For example, if the OA is non-final and the art is not too relevant then n o to minor amendments may work with strong arguments. 3. It is important to understand Examiner’s mindset and formulate response accordingly. An example, Examiners’ always like to see some amendments in the claims whether the OA is non-final or final. 4. To understand client’s strategy before responding to OA. For example, if the client likes to get the patent granted at any cost, then the claims can be narrow. If the client likes to get a broad coverage, then arguments must be strong with minimal claim amendments. 5. Always submit arguments based on claimed invention not based on description. But support examples can be taken from the specification . 6. If possible, keep features for future amendme nts. 7. See a scope to file continuation when the application is allowed but before paying issuance fees. Bayslope Business Solutions Private Limited Level 10, Unitech Cyber Park, Tower B, Sector – 39, Gurgaon – 122003, Haryana, India +91 844.775.1586 (India) +1 646.349.9293 (US) contact@bayslope.com
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