Response to Office Action

What goes into a response to the Office Action?

• A response to an Office Action involves amending the claims, amending the drawings, and/or arguing against the Examiner’s position.
• There are strict rules regarding how to respond to an Office Action, particularly when making amendments, which is another reason that a patent practitioner should be consulted.
• If an Office Action indicates some allowable claims, you should consult with your attorney regarding the proper strategy for your specific circumstance.
• The Examiner can also be contacted at this time to conduct an interview to discuss the likelihood that any amendment or arguments will be successful.

What does it cost?

• The cost for a response could be as little as a few hundred dollars to make minor changes in the form of the application to a few thousand dollars for extensive amendments and/or arguments.
• The cost of responding to the Office Action is mostly due to the attorney’s time involved, and therefore, is dependent on the time it takes to respond and the attorney’s hourly rate. Factors taken into consideration include: complexity of the invention, the number of objections and/or rejections, types of objections/rejections, number of prior art references cited, proximity of the prior art to the invention, number of claims, etc.
• Responses can be filed after the specified deadline; however, the Patent Office will charge a fee. The fee increases with each month past the due date.
• An application will be deemed abandoned if a response is not filed within 6 months of the mailing date of the Office Action. There is a procedure to revive an abandoned application, but obviously you should try to avoid this procedure by responding within three (3) months to the Office Action mailing, or within an additional three (3) months with the payment of the required extension fee.