The patent application is scrutinized very minutely by the examiner. The examiner might have a few objections to the claims stated in the application after the detailed analysis of the application. Response to the objections is to be filed within a certain specified period of time to the Commissioner of patents.
Drafting Response to Patent examiner's objection is more challenging than drafting patent application as it requires to convince the examiner on the patentability of invention which once he already decided as non patentable. By careful amendment of claims in response to an office action from USPTO, the original invention can be preserved. It is essential to read and analyze the office action and any documents included along with it to understand the reasons for rejecting the claims. Most objections will be on grounds of either on the belief that the invention was obvious combination of non novel elements (35 U.S.C. 103) or on the belief that application is not novel (35 U.S.C. 102). In such cases the prior art indicating the previous claim of invention will be included along with the objection. Only by understanding the grounds clearly, can a proper response be drafted. A case caption has to be shown in the first page of the argument mentioning the name of the inventors, invention, filing date and application number. The patent examinerâ€™s name and the division where he works should also be indicated in the caption. A response to the office action has to be drafted requesting for reconsideration or re examination with or without amendment.
The reply should respond to each ground of objection and clearly indicate the supposed errors in the examinerâ€™s action. Arguments must be presented explaining the detailed characteristics that is supposed to render the claims patentable over any applied references or objections. The entire text of the claim has to be included in the response in case the claim is amended. Strike through and double brackets can be used to indicate the deleted matter. Filing of response can be done through the US mail or electronically. A period of two months is generally allowed for filing the response. The extension is possible but can be expensive and may further delay the procedure that may in effect consume the life of the patent.
Our team of learned lawyers are experienced and have an in depth knowledge of patent law. The same equips them to draft appropriate answers for Objections raised by examiners.