The amount of ways patent prosecution tools can benefit a patent application has grown significantly.

LexisNexis PatentOptimizer enables patent practitioners to draft high quality patent applications, as well as generate comprehensive office action responses, with improved efficiency.  The Office Action Response feature within PatentOptimizer enables patent practitioners to: improve their patent prosecution efficiency; streamline their analysis of Office Action rejections, cited prior art references, objections, and indications of allowable subject matter; generate Office Action Response shells containing customizable boilerplate language; and facilitate the avoidance of non-responsive responses and non-compliant amendments.

Advantages of Office Action Response Tools

The Office Action Response tool helps save both time and money by:

  •  Streamlining Office Action Rejection Analysis. PatentOptimizer accesses USPTO patent documents specific to your case and produces outlines of the most recent office action and suggested response.
  • Reducing Office Action Response Drafting Times. In addition to streamlining rejection analysis, the Office Action Response tool recommends boilerplate arguments to seamlessly incorporate into a user’s response draft.
  • Improves Office Action Accuracy. Through advanced rejection analysis and the use of pre-vetted response language, PatentOptimizer facilitates the avoidance of non-compliant amendments and non-responsive responses.

Office Action Response Tools in a Familiar Workspace

Patent practitioners can easily integrate PatentOptimizer into their patent prosecution workflow by leveraging the Office Action Response feature to generate comprehensive Office Action Response shells within the same Microsoft Word software that they are already familiar with, via the following steps:

  1. Open Microsoft Word, click on the Office Action Response (OAR) tool, and select the “Downloads” tab. From the “Downloads” tab, users can enable patent document retrieval straight from the USPTO’s Public PAIR patent document database. Users can also opt to retrieve information from a patent case that will be imported into Word and can be used to recommend office action responses – this includes any office action, claims, amendments, drawings, and other information that a user may wish to utilize in drafting their office action response.desired image file wrapper documents (e.g., office actions, claims, amendments, applications, and drawings) for retrieval from Public/Private PAIR and subsequent OCR.
  2. View and manage, in the “Documents” tab, the previously downloaded and pre-OCR’d documents.
  3. Edit, in the “Biblio” tab, bibliographic information extracted from Public/Private PAIR for subsequent incorporation into the cover page of the OAR shell.
  4. Analyze, in the “Prior Art” tab, cited prior art references, including viewing back-highlighting of the cited references with their respective source documents and passing selected prior art citations into Analytics for further analysis, such as the auto-generation of part name/number indices of patent drawing images contained within the cited references.
  5. Select, in the “Summary & Response” tab, a standard, or custom user defined, Office Action Response (OAR) shell template containing desired substantive and customizable boilerplate language when responding to objections/rejections set forth in the office action to thereby facilitate the avoidance of non-responsive responses.  Streamline your analysis of the office action by cross-navigating from an interactive list of objections and rejections set forth in an office action summary hierarchy to the related substantive text contained within the office action.  View and analyze patent literature cited within the office action by clicking on the cited references listed in the office action summary hierarchy.
  6. Load, in the “Claims” tab, claim sets extracted from local stored documents (e.g., previously filed claim amendment), and clean the same by removing the underlining of previously added claim language, deleting previously stricken through or double bracketed claim language, and updating claim status identifiers, to facilitate the avoidance of non-compliant amendments.

Click “Finish,” and PatentOptimizer generates an office action summary hierarchy that provides an interactive overview of the previous office action. PatentOptimizer even provides links to references found in retrieved USPTO documents.

In the “Responses” tab, users will find suggestions for language to use in their office action response. Users can navigate the PatentOptimizer-generated outline containing, among other things, suggested amendments to be made to the claims, support for the amendments, and recommended remarks and arguments. From the outline, users can double click to incorporate suggestions into the shell response document being built before their eyes.

§112 Related Rejections

Unnecessary §112 related rejections and errors during patent preparation and prosecution may result in increased pendency times, cause unnecessary delays in patent prosecution, increase patent prosecution costs, decrease patent preparation and prosecution efficiency which is detrimental in flat-rate based fee arrangements, delay receipt of a notice of allowance due to solo §112 rejections which were the only rejections in the office action preventing the issuance of a notice of allowance (delayed monetization, which is especially detrimental in quickly evolving technologies), lead to the institution of weak ancillary §103 prior art rejections that may not have otherwise been asserted by the Examiner but for the need to assert the §112 related rejections in an office action, open the door for prosecution history estoppel based on narrowing claim amendments and corresponding arguments made during prosecution to overcome unnecessary §112 related rejections, and result in weaker, less defensible patents which are more susceptible to post-grant challenges for failing to consistently meet the legal requirements for patentability, including the written description and definiteness requirements of §112.

The investment in procuring a patent is substantial.  The financial risks associated with failing to avoid §112 related errors can be monumental.  PatentOptimizer enables patent practitioners to prepare high quality patent applications with improved efficiency, facilitate the avoidance of unnecessary §112 related rejections and post-grant challenges, and create stronger, more defensible patents.  PatentOptimizer also enables patent practitioners to generate comprehensive office action responses with improved efficiency, streamline their analysis of the office action and prior art references cited therein, and facilitate their avoidance of non-responsive responses and non-compliant amendments.

Please feel free to contact us if you have any questions regarding PatentOptimizer or would like to receive a product demonstration of the same at your convenience.

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