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

Anatomy of an Office Action


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 control over many decisions that influence the outcome of the patent process, but still, the outcome is highly dependent on circumstances that are outside of a patent practitioner’s control. Office actions, for example, are issued by patent examiners for a variety of reasons and can affect both the total cost and duration of patent prosecution for patent clients. It is a practitioner’s job to draft client patent applications to minimize the number of office actions they receive, to strive to prosecute their clients’ patent applications as efficiently as possible and to reduce client costs.

Office action anatomy

Examiner Office Actions can contain all sorts of rejections and objections that range from “minor setback” to “significant action needed.” When the USPTO issues rejections, it is because a patent falls short of patent law standards. Objections, by comparison, are issued when a patent application’s denial is based on technicalities. Most office actions contain a mix of rejections and objections. Some of them are avoidable and can depend on the actions of patent practitioners who have the goal to reduce client costs. Legal fees associated with an office action response can  cost patent applicants $3,000. Office actions also cause considerable delays that result from the time it takes for patent examiners to craft their arguments, for patent practitioners to communicate those arguments to their client, and to produce a sufficient rebuttal of the examiner’s opinions.


PatentOptimizer® and avoidable office actions

Outside of drafting comprehensive and accurate invention descriptions, patent professionals have little influence over whether they receive rejections based on an invention’s lack of novelty or obviousness, which are both dependent mostly upon an examiner’s interpretation of then-current prior art and less upon the patent filer’s actions. Objections and rejections based on indefiniteness or a lack of antecedent, on the other hand, directly relate to how a patent application was drafted. Patent professionals can therefore avoid many rejections and objections with careful drafting and meticulous pre-filing patent application reviews which will help to reduce client costs.

Reduce client costs

It takes a fair amount of time for patent professionals to manually conduct thorough pre-filing patent reviews, which means it often costs more money up front than clients are willing to pay. As a result, clients often face the consequences and experience the disappointments that result from receiving avoidable office actions. The PatentOptimizer patent claim analysis and patent writing tool provides a solution that addresses the costs of up-front manual reviews while also helping to avoid many rejections and objections. The PatentOptimizer patent drafting tool seamlessly integrates with Microsoft® Word and Adobe® Acrobat® platforms, and allows users to run near-instantaneous analyses of patent documents. PatentOptimizer users have the power to quickly identify and correct mistakes to avoid office actions and reduce client costs.

From antecedent basis issues to the mislabeling of patent drawings, PatentOptimizer catches patent drafting mistakes before they are sent to the USPTO. 

Learn more about PatentOptimizer.

Discover the effects of efficient patent drafting.

See how to create high-quality patent applications.

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