An innovation or creation created by the authentic inventor that is a patentable subject matter, non-obvious, distinct, and capable of industrial application is given a patent, which is an IPR (Intellectual Property Right) and that is solely issued to the inventor following the patent registration.
A patent cannot be granted simply by filing. There is a very slim probability that a patent will be issued right immediately, even after the greatest possible writing and filing. After a patent application is submitted, a patent examiner looks for previous work that may conflict with the invention and other flaws in the filing paperwork before rejecting it. In an Office Action Response, it is the applicant’s job to persuade the examiner using justifications or by making the required changes to the patent claims.
An “Office Action” is a letter from a patent office in which a patent examiner or other official of the patent office makes an official communication to the patent applicant about the status of the patent application.
The Patent Office examiner looks for formal requirements and the application’s qualification under the laws of each country at the time a patent application is submitted and forwarded for review of its validity. After that, a preliminary decision is made and is known as the First Examination Report (FER). This report makes any necessary modifications or corrections or, if the Patent Application is deemed unqualified and appropriate, it hands out a plain rejection. Then, the Patent Office’s Patent Attorneys will draught a response with clarifications that is also known as a Patent Office Action Response.
Most Office Actions are written by a patent examiner after examining a patent application, to express the examiner’s opinion regarding whether some or all of the claims in the patent application are allowable (i.e. patentable). If the Office Action indicates that some or all of the claims are not allowable, then the applicant has an opportunity to respond to the Office Action, such as by arguing that the examiner is incorrect and/or by amending the claims in an attempt to overcome the examiner’s rejections. A restriction requirement, a non-final Office action, and a final Office action are a few kinds of office actions.
Significant modifications have recently been made to Indian patent practice before the Indian Patent Office. The time to respond to the patent examination report under sections 12 and 13 of the Patents Act, 1970, and the Patents Rules, 2003, is one of the most notable and important changes.
The report of the patent examination is only sent to the patent applicant if he has submitted a request for examination form to the patent office. Form 18, often known as an RFE request form, is something that the patent applicant is required to submit. According to India’s patent modifications, the patent inventor must adhere to all the requirements listed in the patent examination report.
According to Rule 24B (ii)(5) of the Patent Rule, 2003, the major deadline to include for the decree of a grant of the patent application is within 6 months of the issuing of the first statement of objection.
IIPRD helps clients in drafting office action responses for their patent applications. Office Action drafting requires a thorough understanding of the patent law, the invention (technology), and the prior art cited by the examiner. Our team of highly skilled techno-legal professionals has extensive experience in not only drafting superior responses but also in negotiating the scope of the claims with the examiners.
Unlike others, we ensure that the final allowed claim set is not too narrow and we also make sure that any unclaimed subject matter in the patent application is also brought to the client’s notice. For clients who want to draft office action responses themselves, we provide technical review services. In such cases, we review the invention in light of cited art and provide our technical recommendations.
Our Patent Attorneys’ draft office action responses are to be reviewed and filed by clients’ in-house attorneys or outside counsels. Alternatively, we also file responses through our partner attorneys.
A patent cannot be granted simply by filing. There is a very slim probability that a patent will be issued right immediately, even after the greatest possible writing and filing. After a patent application is submitted, a patent examiner looks for previous work that may conflict with the invention and other flaws in the filing paperwork before rejecting it. In an Office Action Response, it is our job to persuade the examiner using justifications or by making the required changes to the patent claims.
Our attorneys at IIPRD have worked on a large number of cases and have concluded and resolved the majority of their pre-grant prosecutions. The factors that must be taken into account and emphasized during an office activity might get quite complex or just be a matter of legal formality compliance.
IIPRD follows the standard procedure when conducting a technical analysis for an office action response, beginning with a list of all examiner objections. Next, a process of solutions is orchestrated, addressing each objection one at a time and in a specific order to minimize work and maximize efficiency. Every time the examiner cites previous art, the typical procedure is to perform a claim chart. In this step, we compare the aspects of our application to the relevant arts.
Office action answers for patents filed in a variety of jurisdictions can be prepared by customers with our aid at IIPRD and sent ready to file. In order to guarantee that the final approved claim set is not too limited, our team of highly qualified techno-legal specialists has vast expertise not only in crafting superior replies but also in aiding attorneys in negotiating the scope with examiners during examiner interviews. In order to ensure that the claims are amended in a timely manner and that the patents are as comprehensive as possible, we also make sure that any unclaimed subject matter is disclosed to the clients.
Here at IIPRD, our skilled patent lawyers can formulate and draft a response to an Office action that a patent examiner has issued. Within a year after the FER’s issuing date, the response to a patent office action must be filed. Through our reliable network of worldwide patent colleagues, we offer patent filing services, patent prosecution services, patent registration in India, and patent filing in other countries like the US.
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