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A Professional Response to Office Action Can Save Your Poorly Drafted Patent Application Even After a Final Rejection

In July, 2015, my firm received an e-mail for a quote and relevant experience in writing office action responses to the USPTO. This e-mail came directly from an inventor having very little knowledge about the patent processes. The complexities were overwhelming for him but, his small business needs this patent to gain significant edge against his competitors.

During our initial conversation, he informed that this patent application had been written by some professional (not himself, as after reading the application that was my first query) and now he knows that it’s a bad one. Even examiner had pointed a query for the ‘Title’ of the application and clearly highlighted this application as an example of “how to not write a patent application”.

Initially, the inventor was not very positive with the situation and sought our views regarding his decision to abandon this application. Nevertheless, the impact that this patent could have on his business made him explore all potential options (within his budget) that could save this application.

We discussed the case internally and put forward our views around which we could build an argument and try to save this patent. On the other hand, we were also not very optimistic about acceptance of our response, in light of the serious objections raised by the examiner regarding the thin nature of specification, which failed to provide support to even some prominent claim elements.

The inventor accepted our proposal and we drafted the first office action reply related to ‘102 and ‘103 based objections. We filed this response with the PTO and waited for the next move. We were very much sure about having another OA due to specification factor. Fortunately, USPTO accepted our argument and issued the second office action related to ‘112 based objection, which was a huge reprieve for the inventor.

Now, after four weeks of filing the second office action reply, the inventor received the “notice of allowance” from the PTO, last week. Here are a few words (verbatim) from his feedback:

“I have tried others but the work is incomparable to Ashutosh! Highly recommended. In fact, Ashutosh has taken a dead patent Application performed by another contractor and given it new life. We are weeks away from a granted application because of Ashutosh and associates.”

Post this, we have also discussed the road-map for extensive protection in order to safeguard against any competitor’s attempt to “design around” his patent and are in the process of preparing CIPs and design patent around his invention.