An Office Action . . . What’s this?
You applied for your patent application 1-2 years ago. You thought you were done, right? Wrong. Now it’s starting to come back to you. When you filed your patent application, you remember your patent attorney mentioning something about the claims having to be examined by the Examiner at the US Patent Office, and that it would take 1-2 years, maybe even longer. It seemed so far in the future that maybe you didn’t really think about what this meant.
Now you just received an Office Action from your patent attorney, and all of the claims are rejected! But when you read the rejections, none of it makes any sense. Certainly your invention is different than these other references the Examiner is citing.
The Examiner just doesn’t understand your invention, right? Maybe. More likely, the Examiner has some basis for the rejections. But don’t give up. You can file a Response to the Office Action. A Response to an Office Action typically includes either or both an amendment and remarks.
Amendments. In an amendment, you agree to make changes to the claims. You might also make changes to the written description of your invention (for example, to correct typographical errors). Sometimes you also have to make changes to the drawings (for example, to show an aspect of your invention more clearly).
Remarks. In a response, you present arguments or reasoning explaining why your invention should be patentable and why the Examiner’s rejections are incorrect. If the Examiner agrees, the next action you receive from the US Patent Office may be a Notice of Allowance – meaning your patent application will issue as a patent if you pay the fees and tend to any formalities the Examiner requires.
But how do you file a Response to an Office Action? The mechanics of preparing and filing a Response are best left to a patent attorney. There are specific requirements, including important deadlines, that must be met in order to file a proper Response with the US Patent Office. Failing to file a proper response in a timely manner may result in a loss of legal rights to your invention.
The cost for filing an amendment and/or response will depend on a number of factors. Examples include the patent attorney’s billing rate, the number and extent of the rejections, and the number of references cited by the Examiner that will need to be reviewed by the patent attorney before preparing an amendment and/or response.
Most likely your patent attorney has included a cost estimate for you when he or she sent you a copy of the Office Action. Typical charges for filing a Response range anywhere from a couple hundred dollars on the low end, to several thousand dollars.
