Office Action Responses

A patent is not granted merely by filing an application. Even when an invention meets the criteria of patentability—novelty, non-obviousness, inventive step, and industrial applicability—a rigorous examination process follows. Once a patent application is submitted, a patent examiner scrutinizes it for conflicting prior art and other deficiencies, including lack of novelty, insufficient disclosure, unclear claims, and non-compliance with patentability requirements. This evaluation is communicated through an “Office Action,” which details necessary modifications or corrections to the claims. In response, the applicant must address these issues through well-reasoned justifications or amendments to persuade the examiner to grant the patent.

Understanding Office Actions

An Office Action is an official correspondence from the patent office that outlines the examiner’s findings regarding the application. This communication may include a First Examination Report (FER) or other office actions that specify required changes, corrections, or, in some cases, a rejection of the application based on prior art or non-compliance with legal standards. For example, under Indian Patent Practice, a FER is issued upon submission of a request for examination, with strict deadlines—such as the six-month period per Rule 24B(ii)(5) of the Patent Rules, 2003) —for response.

Our Approach at Khurana & Khurana

At Khurana & Khurana, we assist clients in drafting precise and persuasive Office Action Responses. Our approach begins with a detailed technical analysis where we systematically review every objection raised by the examiner. We then develop a strategic response that addresses each point in a logical sequence—often using claim charts to compare aspects of the application with cited prior art. Our goal is to ensure that the final allowed claim set is comprehensive and not unduly narrow, while also ensuring that any unclaimed subject matter is highlighted for further consideration.

Our experienced team of techno-legal professionals collaborate closely with inventors and in-house counsels.

(i) For clients who wish to draft responses independently, we offer technical review services, providing expert recommendations based on our in-depth understanding of patent law and the underlying technology.

(ii) For clients who prefer not to draft responses themselves, our patent attorneys can prepare comprehensive, ready-to-file responses, or responses ready to be reviewed by external counsel.

Additionally, we leverage our global network of patent attorneys to facilitate the filing of responses across various jurisdictions.

Our Services

• Drafting clear, precise responses to examiner objections for multiple jurisdictions.

• Conducting thorough technical analyses and preparing claim charts against cited prior art.

• Negotiating claim scope with examiner.

• Reviewing and advising on unclaimed subject matter to ensure comprehensive protection.

• Providing technical review services for in-house preparation of Office Action Responses.

• Facilitating patent filing, prosecution, and registration services in India and internationally (e.g., the USA, the EU, and Japan).

With our robust expertise and global network, Khurana & Khurana ensures that your patent applications receive timely support—streamlining prosecution, reducing office actions, and securing appropriate rights for your inventions under relevant patent law.

📩 For tailored assistance with Office Action Responses, please get in touch with us at info@khuranaandkhurana.com.