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Responding Quickly to Office Actions


By
Smith & Hopen PA

An Office Action Has Arrived: Getting a patent is a balancing act between two objectives: (1) having a patent that is narrow enough to be valid over the prior art; and (2) having a patent that is broad enough to capture infringing products and activities. In most cases, the patent examiner concedes the invention is new and useful but wants to make sure the patent claims are balanced. After all, the patent grant is a powerful legal right….a 20-year monopoly and restraint of trade.

You have probably waited many months or even years for the patent examiner to finally review your case and make findings. We have three (3) months to respond but there is a significant downside in responding slowly.

Human Nature: Short and long term memory are distinct features of the human brain and patent examiners still have hundreds of thousands of backlogged cases. For any individual patent examiner, your application may be one of hundreds he or she is assigned to.

If we wait until the 3-month statutory deadline to respond (or longer with extensions) we lose the opportunity to return the case to the examiner while the application is still fresh in their mind. If an examiner picks up our response many months later it is like starting over from the beginning.

Don’t Lose Patent Term: Prior to June 8, 1995 patents enjoyed a 17-year term from the date of issue. Therefore, we were not in such a hurry to response to office actions. However, patent terms are currently 20-years from the date of filing. Therefore, the length of usable patent term is diminished by delay.

Do not delay...work with your patent counsel to promptly respond to your pending office action.

Contact our office 24/7 at 800-807-3531 or send us an email at patents@smithhopen.com for the status of your patent application.

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