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How to Respond to an Office Action, Part 1: Should You Respond at All? September 19, 2012

Posted by Brian Schar in Patent prosecution.

Before starting to write a response to an office action, you should consider whether you should respond at all.

In many, if not most, art units the first office action won’t be generated until 2-4 years after the application has been filed.  In those 2-4 years, the business of your client will have changed, in some cases substantially.  The initial excitement over a new invention will have worn off, and that invention may be no longer within the core business of your client.  It may have been researched further, and found to be uneconomic, or hard to produce, or hard to market.  That patent application you filed may have been directed to a feature of a product that is no longer part of the product, or directed to a proposed feature of a product that was never implemented.  The product itself may have been discontinued or abandoned.

None of these scenarios are uncommon.  They are the nature of business, particularly fast-moving innovation-driven business that understands the importance of patents and IP.

Before writing an office action response, ask the following questions of your client; you may already know the answers if you are in-house:

– Do the claims cover a product the client is making?  (i.e., do the claims have any defensive value?)

– Do the claims cover a product that a competitor is selling?  (i.e., do the claims have any offensive value?)

– Are the claims directed to a product improvement that the client is serious about implementing?

– Are the claims directed to a product improvement that could be used to block a competitor from using that improvement?

If the answers to all of those questions are “no,” then you should have a talk with your client about just letting the application go.  That can be hard for a client to hear; the temptation for them is to proceed “just in case.”  In addition, if you’re deep into prosecution, a client can focus too much on the sunk costs of prosecution that has already occurred.  At the end of the day, it’s the client’s decision whether to proceed or not.  However, it’s your job to make sure the client has all of the information needed to make a decision.


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