“Focus only on the technical response
Office Action Response Templates (OART) help patent attorneys get a base document for responding to a detailed office action response. OART comprises of a base template with headers, footers and standard Office Action language made specific to client needs, as well as form paragraphs introducing objections raised, and other details deemed relevant by the attorney writing the response.
An office action is an examination report which is issued to the applicant. This correspondence details rejections and objections raised by the examiner in various sections of the patent application be it Abstract, Drawings, Specification or the Claims. Obvious spell and grammatical errors are also listed. Drawings can be objected to their non-conformance to MPEP rules or their mismatch with the description.
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The Claims rejections are detailed and often prior patents are used as basis for rejections under various 35 USC sections. The Office Action is a structured correspondence and likewise a structured response in the same format is desired in order for the prosecution to continue. Moreover, the reply must be responsive to each ground of rejection and objection made by the examiner.
A USPTO patent examiner may issue several different types of official letters about your application. The correct template needs to be picked up for the office action response. Examples of Office actions include a restriction requirement, a non-final Office action, and a final Office action.
It is important to respond to office actions in a timely manner else there is possibility of abandonment of the application. Restriction requirement should be submitted within 2 months from its mailing date. The non-final and final office action within 6 months.
Saves time for the attorney to concentrate only on the technical response
There are two distinct types of information that go into preparing a response – the technical portion and the non-technical portion.
An Office Action Response Template is one where the response template is populated with the non-technical information. This templatised response will now require only the technical details to be filled in by the managing attorney for the case.
The bibliographic data and some inputs on the cover page like mentioning the dates and listing the amendments
The claim set of the previous response to office action is pasted removing the markups and updating the status identifiers.
The amendments to specification is provided paragraph wise with markups.
In case there are objections to the drawings, the drawings are amended and replacement sheets provided
Each rejection heading is mentioned and exact wordings of the rejection from the office action is pasted in the response template. Thereafter, a space is left for the technical response. The same is repeated for all rejections keeping in mind their order in the office action.
Lastly the summary/remarks section is also updated.
The prior art mentioned in the office action is downloaded and shared for easy reference while preparing the response.
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