Office Action Related Services

Unlike the earlier phases of inventing, searching, drafting and filing, you are no longer in control here. Somebody else (i.e., the Patent Examiner / BPAI) will decide whether your invention is patentable. The challenge here is to respond to the Examiner’s objections in such an objective and proactive manner that a patent is granted without unnecessarily compromising the breadth of the patent.

Kensium can support you with the following office action related services:

• Dealing with Office Actions preceding Final Office Action
• Request for Continued Examination (RCE)
• Appeal before the Board of Patent Appeals & Interferences (BPAI)

Dealing with Office Actions preceding Final Office Action

This stage includes the following:

• Reviewing, analyzing, and reporting on an Office Action from the USPTO
• Drafting a reply to an Office Action from the USPTO.

This is a critical stage in the patent prosecution process and requires an understanding of the objections raised by the Examiner in view of the cited prior art and the ability to highlight the differences between Client’s invention and the cited prior art. It also requires an understanding of the Patent Examination process and the kind of responses that are expected from an Applicant (Client).

Objective arguments clearly pointing out the differences from the prior art need to be presented and the claims may need to be amended to overcome the Examiner’s objections. Also, the arguments presented should not contradict what has been disclosed/ stated by the Applicant earlier, to avoid Prosecution History Estoppel issues.

Request for Continued Examination (RCE)

Replying to the Examiner’s rejections at this stage is very tricky because of the substantial prosecution history that already exists. A balance has to be achieved between drafting convincing technical arguments, possibly amending claims, not contradicting earlier arguments, and not raising new issues.

Appeal before the Board of Patent Appeals & Interferences (BPAI)

At this stage an Appeal Brief (with a format and length specified by the USPTO) has to be drafted and filed which will be considered by the Board of Patent Appeals and Interferences (BPAI). Additionally, if the Examiner files a response to the Applicant’s Appeal Brief, the Applicant may want to file a Reply to the Examiner’s response. Needless to say, the stakes are very high at this stage and the Appeal Brief and Reply have to be drafted with extreme care.