Choosing the Best Path Forward After Receiving an Office Action

May 27, 2021

Featured Image-Choosing the Best Path Forward After Receiving an Office Action

Costing clients roughly $3,000 apiece to deal with, office actions can quickly become one of the largest expenses in patent prosecution. Office action price tags do vary depending on the types of rejections made by a patent examiner and the amount of research and drafting needed to appropriately respond to those rejections. Reducing the overall number of office action responses, as well as the amount of time spent on each response, is a great way to ensure an expedient patent process that fits within your clients’ budgets. Advanced patent prosecution tools can help patent professionals decide how and when to avoid submitting office action responses, and how to draft effective responses when there is no other choice. 

Is It Worthwhile to Submit an Office Action Response? 

Before jumping straight into drafting a response to overcome an office action, it is wise to consider the likelihood that you will succeed in your argument and whether any other options should be considered. The best place to start is to size up your assigned USPTO patent examiner using USPTO patent data and analytics provided by the LexisNexis PatentAdvisor® patent prosecution platform. In addition to providing historical patent statistics for each patent examiner, such as the average number of office actions they issue per application and the average patent application pendency times, PatentAdvisor™ also provides proprietary patent metrics that can help predict an examiner’s future actionsThe PatentAdvisor ETA™, for example, is based on several factors, including an examiner’s experience level and decision trends, and can be used by patent professionals to determine how receptive an examiner is likely to be to their office action response. 

 In addition to predicting the success of an office action response, it is prudent to consider all of the alternative, available options. Interviewing your patent examiner is one of the most cost-efficient options available to patent professionals, and each interview is an opportunity to clarify any confusion that stands in the way of a patent’s issuance. Filing an appeal, on the other hand, comes at a greater cost, but could be a worthwhile consideration depending on the number of office actions that could be avoided. The PatentAdvisor platform provides both interview statistics and appeals statistics that show users exactly how their examiners have responded in past proceedings. With a better understanding of the available options and their likely outcomes, patent professionals can make smarter decisions about how to handle each office action they face. 


Interview Statistics
Patented & Abanoned 2


How Do I Save Time Drafting a Response tan Office Action? 

If you are going to draft a response to an office action, then the goal should be to write as persuasively as possible while keeping your client’s budget in mind. Drafting a response from scratch is time-intensive, and since “time is money,” drafting from scratch should be avoided when possible. Rather than starting with a blank sheet of paper, turn your attention to the successful arguments that have been submitted to the USPTO in the past. The USPTO receives over half-a-million patent applications each year and has for many decades. The odds of finding an analogous rejection and response are in your favorfinding the best response in the USPTO patent archives has always been the challenge. The LexisNexis PatentOptimizer®patent drafting platform, through its Office Action Response (OAR) tool, is capable of evaluating examiner-issued office actions and extracting suggested responses from the USPTO archives. PatentOptimizer users can even use OAR to build customizable argument shells to cut down on drafting times while also building upon tested argument language. 


Office actions have been known to require a lot of time and a lot of money to overcome, but that does not have to always be the case. PatentAdvisor patent statistics and analytics reveal alternatives to drafting office action responses and help patent professionals make better choices when moving through the patent process. When drafting an office action response is the best or only path forward, the PatentOptimizer OAR tool helps practitioners build effective arguments efficiently to reduce costs and keep clients happy. 


To learn more about PatentAdvisor read Patent Analytics for Predictions, Performance and EvaluationsPart 1 and Part 2. To learn more about PatentAdvisor ETA download the data sheet 


To learn more about PatentOptimizer read Reducing Costs by Investing in Patent Quality and Rejection is Nothing to FearClick here to learn more about the PatentOptimizer Office Action Response tool.  

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