Response to Office Actions—Weighing Options
Response to Office Actions: Evaluate Examiner Data
There is a wealth of USPTO patent examiner data available for patent professionals to leverage to make smarter decisions throughout patent prosecution. It is now well known that individual examiners respond differently to actions that patent practitioners take throughout the patent process. As a result, a particular patent examiner’s career statistics can reveal which actions they have responded to most favorably in past cases. The appropriateness of a decision to either rebut a patent examiner’s arguments directly in an office action response, file a Request for Continued Examination (RCE) or file an appeal depends on the examiner being faced. The LexisNexis PatentAdvisor® patent analytics platform empowers users to evaluate their patent examiners’ office action statistics, RCE statistics and appeal statistics to help predict which path forward will lead to the best results.
Explore how to Excel at All Stages of the Patent Process and Become a Quadruple Threat.
Response to Office Actions: Produce An Effective Response
If overcoming an office action is your objective, you will need solid arguments to back your position and rebut your examiner’s rejections. Fortunately, the USPTO patent archives are full of rejections that have been overcome by past patent applicants, and many of the arguments they used could be applicable to your situation. The Office Action Response tool, available to LexisNexis PatentOptimizer® users, automatically analyzes USPTO patent documents against users’ office action contents and generates desired response language to help quickly build office action responses. By relying on arguments that have worked in the past, users can cut down on their office action drafting time while simultaneously improving the odds that their responses will successfully overcome examiner rejections.
Learn the Four Tips to Avoid or Handle Office Actions.
Review PTAB Statistics Before Appeal
Getting nowhere with your patent examiner? Appealing your USPTO patent examiner’s decision is not an inexpensive endeavor, but it could be worthwhile if the odds of overturning that decision are in your favor. The PatentAdvisor™ PTAB decisions tool helps users understand the risk of seeking an appeal by providing statistics on PTAB outcomes under specific circumstances. Users can view the chances of having their examiner’s decision be affirmed partially affirmed, or overturned upon appeal and can tailor statistics based on the types of rejections that may be appealed (e.g., Section 101, 102, 103, 112, etc.) as well as sub-issues that could arise (e.g., lack of antecedent basis, examiner’s standards of proof, etc.). With an understanding of how an appeal will likely play out, patent practitioners can make prudent decisions as to when it is proper to try to appeal an examiner’s decision.
For more on the response to office actions read Patent Prosecution Analytics: No Longer Just a Nice to Have and watch the on-demand webinar.
Learn more about PatentAdvisor and find training resources here. Watch the on-demand webinar The Future of Patent Prosecution: The role of patent analytics and the evolution of the patent prosecutor.
Learn more about PatentOptimizer and find training resources here. Download the Office Action Response tool datasheet.
Draft Superior Patent Applications
PatentOptimizer® patent drafting technology streamlines patent analysis and serves as a critical quality control check when dissecting issued patent or exploring show to write a patent application of optimal quality.
