Office Action Technical Analysis

Introduction

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. Most Office Actions are written by a patent examiner after examining a patent application, for the purpose of expressing 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 back 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.

Our Approach

Khurana & Khurana 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 with examiners. Unlike others, we ensure that the finally 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 clients 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. We can draft office action responses to be reviewed and filed by client’s in-house attorneys or outside counsels. Alternatively, we can file responses through our partner attorneys.