Office Action Response Aid: A Case Study
Situation:
Responding to the Office Action from the USPTO is an important US patent prosecution function. An office action response includes both legal and technical arguments that coexist harmoniously in order to rebut the objections/rejections raised in the office action. While legal arguments are based on one's familiarity with Patent law and Manuals, technical arguments are based on the technical understanding of the claimed invention and the cited art. In addition, understanding an examiners contention and appreciation of the claim element as well as cited art is imperative for drafting a response to the office action.
Attorneys/agents handle a substantial number of office actions every year. Hence, it is necessary that a thorough, technically accurate and well studied analysis of rejections under 35 U.S.C 102, 103, and 112 be made. Additional inputs such as prosecution history, suggestions for claim amendments, unclaimed features, and patent continuity may also be called for. In this respect a business need for a tool assisting attorneys/agents to mine and compile information while drafting an office action response may be called for.
Solution:
Office Action Response Aid (OARA) is a certificate which drastically reduces the time attorneys/agents spend on mining and compiling information to draft a complete response to an Office Action. Offshoring the preparation of an OARA to a well credentialed vendor located in India is a viable solution not only in terms of decreasing the costs and time spent on the same, but also ensures quality and technical accuracy.
Challenges:
A service seeker based in the US and EP looking to source in the services from an offshore source would typically face the following challenges:
- Minimizing the turnaround time
- Security of data and confidentiality
- Meeting translation challenges to enable efficient knowledge transfer
- Need based Customized/supplemental services
- Lack of internal processes for specifying work
Addressing the Challenges:
Credible service providers address these challenges by:
- Building a team of carefully recruited techno-legal domain experts
- Training from in-house IP-counsels and attorneys
- China Wall concept to ensure Confidentiality and data security
- Iterations with the client to have uniform understanding of the invention
- Process experts to monitor and optimize IP processes
- Use of state of the art infrastructure to enhance overall service standards
- Dedicated teams performing targeted analysis and presentation of information in formats which are directly responsive to the clients' needs
- Signing non-disclosure/confidentiality agreements with all its employees
- Meeting strictest confidentiality and data security standards by using a robust IT infrastructure, adhering to ISO 27001 norms and the use of well crafted non-disclosure agreements
Benefit:
High quality Office Action Response Aid(s) is delivered by experienced techno-legal Patent professionals who are available 24 x7 alongside a multi-tier Quality Control at a fraction of the US/UK costs.
Case-in-point:
A US based IP firm specializing in patent prosecution (the client) has been working with us to assist them in the preparation of Office Action Responses. A number of patent applications were shared confidentially via various protected communication modes. An acknowledgement estimating the turnaround time (TAT) estimation of the project along with docketing information was intimated. Iterations with the client followed to understand the client's requirement closely. OARAs were then prepared revealing in-depth technical arguments inclusive of optional amendments and suggestions on stale amendments. This also helped the firm to renew its prosecution strategies. The benefits derived from an OARA have thus far lead to a continued relationship with our client.
