Patent Guide: Office Actions (examination of your application)

An Office Action is the first substantive examination of the claims of your patent application. Most Office Actions have rejections – which are supposed to point out with particularity the reasons for rejection.

Then you negotiate with the examiner.

Skipping to the rejection portion, here’s a small excerpt of the rejection we received for our RFID Bingo Ball patent:

At this point, the way our law firm generally works, we’ll break the response up into three stages:

1) In depth review of all references cited – we will provide you with a break down with four parts:

   a) each phrase of each claim on a separate page,

   b) copy/paste examiner’s argument,

   c) copy/paste each citation from the examiner (they sometimes fudge or fail to find a reason to reject a particular part of your claim),

   d) . . . and once we have a complete and detailed view, we provide our analysis with why we disagree with the Examiner, agree, or propose a claim amendment. 

2) Examiner Interview – various websites have culled the public records from the U.S. Patent Office and provided statistics for each examiner.  If you get an examiner with a 10% allowance rate (some have 0%) you know what you’re up against.  Others have 99% allowance rates (really).  When the stats show that an examiner interview will increase the chances of success, we do so.  Today, these interviews are usually by video and creates a personal connection with the examiner and we hear each other out.

3) Written Response – This is where we take everything from above in “1” and “2” and put it down in legal and scientific arguments on paper. Here’s an example, excerpted from our response to the above – e.g. “Claim 1 has requires an RFID ball.  The Office Action cites patent x,xxx,xxx, paragraph [23] which states, ‘RFID chew toy’ which is not a ball.  Therefore, claim 1 is allowable.”