Patent Office Action Response

Summary

This patent office action response template is for a response and amendment to an office action from the United States Patent Office (USPTO) advising an applicant of a non-final rejection of a utility patent application. This template includes practical guidance and drafting notes. If you receive an office action rejecting pending claims, to avoid abandonment of the patent application, you must respond to the office action in writing. You must address all the grounds for the examiner's rejections and/or objections and request reconsideration or further examination, either with or without amending the claims. For each rejection based on prior art, you must present arguments distinguishing the cited art from the pending claims, including any newly presented claims. See 37 C.F.R. § 1.111(a)(1) and 37 C.F.R. § 1.111(b). This template includes amendments to the specification, claims and drawings. An examiner may object to the form of a claim (e.g., improper claim numbering or a lack of proper antecedent basis). Similarly, the examiner may object to informalities in the application's specification and/or drawings. This template includes examples of responses to such objections. Note that you may request that objections or requirements as to form that are not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. 37 C.F.R. § 1.111(b). You should tailor this template to respond to the examiner's specific rejection(s) and objection(s). Remember that your response will form part of the intrinsic record that may later become important in patent enforcement and validity proceedings. For example, courts may consult office action responses to help construe claim limitations and evaluate whether the applicant disclaimed particular claim scope during prosecution. Make sure that your response does not contain any unnecessary admissions that would limit claim scope. Also, avoid unnecessary characterizations of the invention. Stick to the claim language when referring to the invention and, preferably, refer to the "presently claimed subject matter," rather than "the present invention," whenever possible. See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007). It is important that your response is correctly filed and displayed in the file history. You should, therefore, include the following caption in a header in each page of your response: Attorney Docket No. [Attorney docket number] Application No. [Application number] Art Unit [Art unit number] Response to Office Action mailed [Office action mailing date] Each page should also be numbered to ensure that every page has been properly filed and to facilitate reference to a particular page of a response in later prosecution, if necessary. For an overview of the patent examination process, including responses to office actions, see Utility Patent Application Examination Process.