Tips and
tricks for drafting Office Action responses on a tight
budget
Times
are tough for patent prosecutors. Companies are reducing their patent expenses and we are now expected to do more work in less time. As
ever, it is important to
work efficiently on projects with
tight or fixed budgets, such as Office Action responses. Who wants
to deal with partners cutting your time or clients refusing their bills? Luckily, with the help of streamlining software
and some initial preparation, it is possible to draft high-quality Office Action responses in
a cost-effective manner.
A
typical response to an Office Action rejection usually involves many tedious tasks.
For instance, you may need to download the cited art, pull a
clean set of claims from
the previous response into the current draft, write a summary of claims
for the Remarks section, check amendments for any errors, and etc. And because you might not have a great secretary who takes care of all that tedium, you can often spend a large portion of your response budget even before you start writing the actual argument. But what you really want is to spend as
little time as possible on all the mechanical tasks, thus allowing you to
concentrate on the actual analysis and drafting.
What
follows is a list of tips and tricks for drafting responses
to typical Office Actions that involve prior art rejections. The
list is not meant to be exhaustive, but hopefully you will find something new that may save you time on your next response. Some of the tips are general; others rely on built-in features
in Word or special drafting software, such as ClaimMaster
(www.patentclaimmaster.com)
1.
If you have a text pdf file of the Office
Action, you can use ClaimMaster’s Office Action Browser tool to quickly
identify rejections (35 U.S.C. §§ 102, 103, etc.), objections, or
allowances in the action. You can then use the software to download the applied prior art references from Google Patents. The tool will also let you identify any
claims that the action failed to address. Click to see video
2. Before you can formulate a response strategy, you
will need to analyze the general structure of the claims in your application. This is especially true if you inherited the
case from someone else and are not yet familiar with the claims. You can use ClaimMaster’s viewer to quickly
identify the hierarchy and types of claims in the application. Click to see video The tool will also let you pinpoint any differences in scope between claim sets with visual highlighting. Click to see video
3. When analyzing
the Office Action, I would suggest that you do not immediately
read the specific details/citations in the examiner’s rejection.
Instead, try to read each reference carefully and note any broad differences between the
reference and what is being claimed. Doing so should allow you to evaluate the reference without having your opinion influenced by the Examiner’s
reasoning. I
find it much easier to identify holes in the rejection when I get a
general sense of the reference before diving into the detailed
rejections.
4. Once you finalize your response strategy, it is time to put pen to paper. Using any of the shortcuts below should help you save time during drafting of the response:
o Start
with a generic pre-drafted template that already has some sections/law populated. Having
a
response template helps you organize your thoughts and ensures that you do not
waste time “re-inventing the wheel” every time you sit down to write a response. You can also use ClaimMaster’s Office Action
browser to generate a summary of rejections for you.
o Using
Word’s auto-correct feature may help you save some time when you draft a response. This feature is available in Word from
“Tools->AutoCorrection Options …,” where you can define the shorthand expressions and the corresponding full text. For example, you may use “ARR”
for “Applicants respectively request,” so that when you type “ARR" in the document, Word will expand it to “Applicants
respectively request.” To avoid
confusion, make sure to pick unique shorthand names that do not normally appear
in text.
o If
you need to get an updated claim set from the previous response into the
current draft, use ClaimMaster’s amendment tool. It lets you manipulate amendments and
indicators, so that you can quickly generate a clean claim set from a previous
amendment in a matter of seconds. Click to see video If you are adding
new claims, the software will also calculate any excess claim fees.
o Once
you finalize your claim amendments and proceed to the “Remarks” section, use
ClaimMaster’s summary tool to generate a summary of claims, amendments, etc
that you can paste into the beginning of your remarks. Click to see video
o When
drafting the actual argument, try to avoid saying more than
necessary about the claims or the prior art. Just address the differences between
the art and your claim limitations and/or impropriety of combinations. You should avoid needless characterization of
prior art, your invention, or paraphrasing the claim language. You do not want to create unnecessary
prosecution estoppel and everything you say in your response may be later used to limit the
scope of the claims during litigation.
o Finally,
once you finish the response, you can use ClaimMaster to double-check it for
you. The software is going to pinpoint any errors
in claim amendments, numbering, missing antecedents, or status indicators. Click to see video. Here's another video
Using the software for error checking allows
you to reduce the risk of receiving a notice of non-compliance from the USPTO
or, worse, seriously messing up your claims.
Please note, however, that while ClaimMaster can catch many types of
insidious errors, you always need to review the response one final time, just
to make sure that everything is correct before you file it.
If
you follow the above tips, you can significantly reduce the amount of burdensome work
involved in each Office Action response.
For example, instead of spending 20 minutes trying to create a clean set of
claims from a particularly messy set of previous amendments, you can spend that
time on the analysis or drafting of the response resulting in more polished work product. And all clients will appreciate
that.