How to Prepare a Response to an Office Action. Episode 45

Understanding the Office Action Response Format

In the last episode, I talked about how to read an office action and the strategy for deciding whether to abandon, amend, or argue in your response. I also covered objections and rejections. In this episode, I’m not going to go into specific responses, because there are so many different kinds, and I will cover a few general types in later episodes. However, office action responses follow a specific format, which I will outline here. The response generally includes a structured first page and a concluding paragraph asking the examiner to find your claims allowable.

If you want to draft a response yourself, you can look up a sample format on the patent office website.

Header Information

At the very top, in bold and centered, you should write: In the United States Patent and Trademark Office.

Below that, you will include information about your application:

• The application number.

• The applicant or inventor’s name.

• The filing date.

• The technology center or art group (which can be found on the office action).

• The examiner’s name.

• The confirmation number (a four-digit code found in the office action, which is required for uploading the document).

• A docket number (if you have one for tracking purposes).

• A customer number (if you have a USPTO customer number).

Many people format this information in two columns to save space on the page.

Address Block

Below the application information, you will include the address of where the response is being sent. Even though you will likely submit it electronically, it is standard practice to include the mailing address. If this is a regular response, you should use:

Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia, 22313-1450.

Response Heading and Introduction

Next, you will include a bolded heading such as: Amendment or Response to Office Action.

Then, you introduce the response with a formal opening. You might write:

Dear Sir or Madam: In response to the Office Action dated [insert date], please amend the above-identified application as follows.

If you are not making amendments and are only arguing, you can write:

Dear Sir or Madam: Please consider the following response for the above-identified application.

End this section with a semicolon.

Mini Table of Contents

After the introduction, you will include a brief outline of the response. This functions as a mini table of contents, listing each section on a new line.

Common sections include:

• Amendments to the Specification.

• Amendments to the Claims.

• Amendments to Drawings.

• Remarks and Arguments.

Each section should indicate the page number where it begins. For example:

Amendments to the Specification begin on page 2 of this response.

Amendments to the Claims begin on page 3 of this response.

Since you may not know the exact page numbers when drafting the first page, you can leave them blank initially and fill them in at the end.

Headers in the Response

You may include headers within the response if they help organize the document. Typically, the application number and docket number are included in the headers, but avoid adding excessive information.

Substance of the Response

The following pages will contain the substantive response. Since this episode is just an introduction, I won’t go into the specific details of different response types here. However, I will cover them in later episodes.

Conclusion

At the very end of your response, you should include a short conclusion.

A typical conclusion might read:

For the foregoing reasons, it is respectfully submitted that this application is now in condition for allowance.

You can also include your phone number and invite the examiner to call you if discussing the application further would be helpful in obtaining an allowance.

Some applicants include a statement requesting an extension of time and indicating that any extension fees should be deducted from a deposit account. However, if you do not have a USPTO deposit account, this option will not be available to you.

Final Submission Details

The response should end as a formal letter, using:

Respectfully submitted, followed by your name. A signature is not required, but you can include an electronic signature if you prefer.

You may also include your address at the bottom, along with the submission date.

Conclusion

That’s the basic format for preparing an office action response. In the next episodes, I will go over how to handle specific types of rejections and objections.

I’m Adam Diament, and until next time—keep on inventing!