Options for Responding to Your First Office Action. Episode 44

Overview of Response Options

This is going to be a relatively short episode because I’m just going to go over the three main things you can do when you receive your first office action. I say first office action because if you receive a final office action—usually your second office action—there are many more options to consider, and it can become quite complicated.

In the last episode, I explained how to read an office action. You need to check what the objections and rejections are. Essentially, you have three options, which I call the Three A’s: Abandon, Amend, and Argue.

Abandoning the Application

The first option is to abandon your application. This means you simply ignore the office action, and as a result, your application will go abandoned.

Why would you do this? Suppose you submitted an application to the patent office and the examiner found that an identical invention already exists. If it truly is the exact same invention, there may be nothing you can do to obtain a patent. In that case, you might decide to abandon the application.

You can formally write to the patent office to expressly abandon your application, but I generally recommend not doing that. Instead, simply do nothing, because you might later change your mind and decide to respond.

Sometimes, an invention is patentable, but you may still choose to abandon the application because you have decided not to market the product. There are many reasons for abandoning an application, but often it is because there are too many similar inventions out there, and it would be too difficult, expensive, or time-consuming to fight for a patent with little chance of success.

Amending the Claims

The second option is to amend your claims or correct other parts of the application that the examiner says need fixing.

Let’s say the examiner rejected your claim because they found prior art that already describes a mechanical pencil with parts A, B, and C. If you agree that you cannot obtain a patent on a mechanical pencil with only A, B, and C, but your description also mentions a variation that includes an additional part D—one that does not exist in any prior art—you can amend your claims to include part D. By doing this, you revise your claim to include A, B, C, and D, and you can ask the examiner to reevaluate your amended claims for allowance.

Arguing Against the Examiner’s Rejection

The third option is to argue that the examiner was incorrect in their rejection.

Returning to the mechanical pencil example, suppose you claimed a pencil with parts A, B, and C, and the examiner rejected your claim based on prior art that supposedly includes these same elements. However, let’s say the prior art actually describes a different mechanism—for example, instead of a clickable button (part A) to extend the lead, the prior art shows a twisting knob.

If your claim specifies a clickable button and the examiner misinterpreted the prior art by saying it discloses a clickable button when it actually has a twisting knob, you would respond by pointing out this error. Your response might state: The reference cited does not teach a mechanical pencil having a clickable button. Therefore, the prior art does not disclose each and every limitation of the claims, and the Section 102 rejection is improper.

This is just one example of a simple anticipation rejection under Section 102. There could be other types of rejections for different reasons, but the key point is that you have the option to leave your claims unchanged and argue that the examiner misread or misunderstood the prior art. If the examiner agrees, they may reevaluate your claims and allow your patent.

Combining Amendments and Arguments

In reality, amending your claims and arguing against the rejection often go hand in hand. You usually don’t just submit amendments without explaining why they make your claims allowable. Likewise, if you make amendments, you should include arguments showing why the changes address the examiner’s concerns and justify allowance of your claims.

Considering an Examiner Interview

Before deciding which of the Three A’s to pursue, you may also want to set up an interview with the examiner. Speaking directly with the examiner can give you better insight into their reasoning and help you determine the best response strategy. I will cover examiner interviews in a later episode.

Conclusion

So, to summarize, your three main options for responding to your first office action are to abandon, amend, or argue. Each option has its advantages and drawbacks, and sometimes a combination of amending and arguing is the best approach.

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