Patent Tools for Avoiding Office Actions

Aug 17, 2021

Patent Tools for Avoiding Office Actions
Problems are generally much less costly to avoid than to fix. A simple oil change can help prevent a blown engine, and a green salad here and there can help prevent future disease. For patent practitioners, thorough planning and drafting can help prevent the issuance of office actions by USPTO patent examiners. Once issued, an office action can be quite expensive to sort out. Patent clients routinely and reluctantly spend in the ballpark of $3,000 for their patent practitioners to read their patent examiner’s remarks, understand the patent references cited in the office action, and draft a response to overcome the examiner’s rejections and objections. To reduce the odds of facing examiner rejections and objections, patent professionals need look no further than the patent search and drafting tools provided by LexisNexis® Intellectual Property.

Avoiding §102 and §103 Rejections

The most problematic rejections a patent applicant can receive from a USPTO patent examiner are arguably those based on novelty (35 U.S.C. §102) and obviousness (35 U.S.C. §103). It can be quite a challenge to change an examiner’s mind once they have formed an opinion on if an invention is new and non-obviousness. The tragedy, however, is that Section 102 and 103 rejections can often be avoided by framing a claimed invention differently in light of the prior art. Unfortunately, many patent applicants forego the high-quality patent searches that can reveal the prior art references worth considering during drafting and before submission to the USPTO.
TotalPatent One
Patent searches are often viewed as costly and time-consuming because of their global scope. Prior art records are maintained in many separate databases, and searching each of them has historically been the only way to conduct a truly comprehensive search. The LexisNexis TotalPatent One® patent search tool facilitates the search for full-text patent documents from 56 patent authorities simultaneously. Combined with the advanced search filters and intuitive features available in TotalPatent One®, patent professionals can conduct quality patent searches with efficiency. With more prior art references to take into account, professionals can strategically draft their patent applications to reduce the chances of receiving a rejection based on novelty or obviousness.

For more on prior art research read What is Prior Art Research and How is it Done? and Do This, Not That: Tips for More Efficient Patent Searches.

Avoiding §112 Rejections and Other Objections

Although they are often less costly to resolve than novelty and obviousness rejections, Section 112 rejections and examiner objections can cause delays in the patent process and require time to address (usually at an attorney’s hourly rate). These obstacles can often be avoided with thorough proofreading and review before submission to the USPTO, but even when people thoroughly review patent drafts, they can still make mistakes and fail to conduct their review with an objective eye. A patent drafting tool like LexisNexis PatentOptimizer® can help patent professionals overcome human shortcomings by finding errors and inconsistencies that could lead to patent examiner rejections and objections.
The PatentOptimizer® patent analysis and drafting tool integrates into word processing programs commonly used by patent professionals, including Microsoft® Word and Adobe® Acrobat®, to provide actionable feedback on patent drafts. Users can leverage a wide variety of tools that help improve patent quality. Patent professionals can reduce objections by automatically identifying clerical errors, labeling and language inconsistencies across document parts and other misalignments with patent process requirements. Moreover, PatentOptimizer can identify and help correct claim issues, a lack of antecedent language, and ambiguous terms and phrases that can lead to rejections based on Section 112. With PatentOptimizer, patent practitioners can spend a little time improving their applications to avoid costly office actions down the line.

For more on how PatentOptimizer can help find errors and inconsistencies read Avoiding Section 112(b) Rejections With Patent Drafting Tools and Rejection is Nothing to Fear.

Preventing office actions means saving clients money and avoiding delays in the patent process. With fast and effective global patent searches facilitated by TotalPatent One, and with the optimization of patent drafts with PatentOptimizer, patent professionals can side-step common examiner rejections and objections, reduce patent prosecution costs and keep their clients satisfied.

For more on how LexisNexis Intellectual Property solutions can help with avoiding office actions read Combining Tools for All Stages of Patent Prosecution and A Practitioner’s Mission to Improve Prosecution Results.

Find TotalPatent One training documents and videos here.

Find PatentOptimzer training documents and videos here.

New Call-to-action

Integration of Automation in the Patent Process

Automation has come a long way in a short amount of time, thanks to developments in big data, machine learning, robotics and the Internet of Things. Many people and businesses have grown accustomed to having software and machines perform tasks that humans once...

Performance Checks to Provide Better Patent Services

Improvement is iterative. It often arises from an accumulation of small changes that stem from experience and self-awareness. Before making changes, one must first be aware of steps that will likely lead to better results. Performance checks help to identify issues to...

Anatomy of an Office Action: Reduce Client Costs with LexisNexis PatentOptimizer®

The idea that we should focus our attention on things that are within our control and worry little about the things that are not, is a philosophy that spans ages. It is also a philosophy that is particularly valuable in patent prosecution. Patent professionals have...

Quality Patent Searches with LexisNexis TotalPatent One®

It may sound outlandish but constructing and executing quality patent searches has a lot in common with erecting any physical structure. It is best to begin with a solid foundation in either scenario but, in the case of patent searches, the foundation’s quality...

Upgrade Your Design Patent Searches With LexisNexis TotalPatent One®

Utility patents get most of the attention in the patent world, but design patents come with unique advantages, and can be valuable additions to client patent portfolios. Unlike utility patents that protect the function or use of items, methods or processes, design...

Prior Art Research

Conducting prior art research before filing a patent application can have a profound influence on patent strategies and outcomes. Not only can understanding prior art help to determine whether an invention is patentable, but it can also inform how a patent application...