Office Action Notification Letter

Summary

This notification letter template may be used to draft a letter notifying a patent applicant client that the United States Patent and Trademark Office (USPTO) has issued an office action in their pending patent application. This template includes practical guidance and drafting notes. Immediately upon receipt of an office action, docket the due date for the response in your firm's docketing system. Then notify the client that an office action has issued. The importance of docketing the deadline and promptly reporting the office action to the client cannot be over-emphasized. Docketing the date for the response without delay mitigates the risk of missing the deadline and inadvertently abandoning the patent application. Prompt communication with the client facilitates compliance with ethics rules and best practices, and also supports good client relationships. The content of your notification letter will vary depending on your firm's standard practice for office action notifications, the type of client, the complexity of the underlying technology, and the issues raised in the office action. Some practitioners prefer to notify the client immediately using a simple form letter with a copy of the office action. This approach allows you to incorporate the transmission of the notification letter into your docketing procedure. Other practitioners prefer to include detailed recommendations for further prosecution in their notification letter. The choice of notification letter is also dependent on any agreements you may have with your client, since the amount of time put into the notification letter may be tied to the legal fees associated with the notification. You may include a statement that an appropriate amendment or argument may readily overcome the rejection or objection. You may also advise that you will follow up with detailed recommendations on how to respond to the examiner once you have analyzed the issues raised in the office action. Alternatively, you may explain how you propose to respond to the office action. Tailor your letter according to your preferred practice and/or your client’s preferences. The format of the notification letter should also take the type of client into account. For example, an independent inventor for whom you have filed a first patent application may be very concerned to receive an office action rejecting the application. It may be important for this type of client to reassure them that the patent examiner can likely be persuaded to withdraw the rejection by submitting amendments or arguments. At the other end of the spectrum, a sophisticated corporate client will understand that patent examiners routinely reject some or all patent claims and that rejections can often be overcome. Also, experienced patent applicants may prefer to analyze the office action themselves before authorizing you to do any further work. Such clients will prefer a simple notification letter. For example, an in-house counsel client may be overseeing the prosecution of foreign counterpart applications and, for this reason, may already be familiar with the prior art issues raised by the examiner and how to respond to them. The type of notification letter that you send may also vary depending on the complexity of the technology and the difficulty of the issues raised in the office action. For simple inventions, you may analyze the issues raised in the office action relatively quickly and make recommendations on responding to the examiner. For more complex inventions, you may need more time to review and understand any prior art on which an examiner's rejection is based. This template provides language for reporting a variety of grounds for rejection or objections and should be tailored to the office action contents. For resources to help analyze office actions and prepare responses, see Patent Office Action Response Resource Kit.