Patent Prosecution Support

Office Action Responses

Restriction Requirement with/without Species election

Prometheus IP is proficient in preparing response to restriction requirements which are issued by the USPTO. Usually, a restriction requirement is issued prior to beginning of prosecution prior to evaluating patentability to reduce the search burden. A restriction requirement is issued when the application undergoes examination and the examiner deems that the applicant is attempting to claim two or more different inventions in one application. As a single patent application is only allowed to be filed on a single invention, the patent office issues a “restriction requirement” in this case. This document requires the applicant to select a single invention for further evaluation by the patent office. In some cases, an election of species is also warranted along with restriction requirement when multiple variations of an invention are claimed. The claims may include one or more generic claims with the generic claims encompassing all the variations. The other inventions may be made the subject of separate applications that, if filed while the first application is still pending, will be entitled to the benefit of the filing date of the first application. These separate applications are referred to as a “divisional applications. Based on the prosecution history and the expert technical expertise, the technical specialists provide expert opinion whether the restriction is proper or not and advise as to how one can proceed further.

Non-Final office Action Response

A non-final Office Action is first usually issued by the patent examiner in the beginning after reviewing the merits of the application for the very first time post filing of the application or after the preliminary amendments were entered. The statutory period to respond to a non-final office action is required to respond within a shortened statutory time (3 months from the Office Action mailing date), the applicant may extend that period up to the maximum 6 month period set by statute by filing a written request and the appropriate fee. The Applicant can make fairly substantial amendments to the claims in response to any objections raised in the non-final Office Action.

Final Office Action Response

Once an applicant has filed a response to the non-final Office Action, the examiner may then either:

(i) Issue a notice of allowance;
(ii) Raise some new objections and issue a second Non-Final Office Action; or
(iii) Maintain at least some of the objections which were raised in the first Office Action in which case the Office Action is likely to be indicated as being a “Final” Office Action. An applicant is relatively restricted in the scope of amendment which they can make when filing a response to a Final Office Action.

If fairly substantial amendments are made in the response to Final Office Action, the examiner may refuse to consider the amendments on the grounds that the amendments raise new issues. In such circumstances an applicant may proceed further with the application by either:
(i) filing a Request for Continued Examination (“RCE”); or
(ii) filing a notice of appeal. RCE provides have at least two further opportunities to amend the claims and/or to present arguments for the examiner’s consideration.

Advisory Action

The applicant has the opportunity to present claim amendments within 2 months of issuance of Final Office Action accompanied by the AFCP. The Examiner then issues an advisory action that usually spells out the examiner’s position. Post response to the advisory action, the either a NoA is issued or it is informed that the claim amendments have raised new issues thus it was not possible to ascertain if the presently amended claims place the application in a condition for allowance. Wherein, the response to the claim amendments does not place the application in a condition for allowance, the Applicant can file the response to Final Office Action accompanied by RCE.

Filing of Missing parts in Patent Application/Non-compliant Notices

If the patent application does not include at least a specification or if the submitted papers are too informal to be given a filing date, the case is held in the Office of Patent Application Processing (OPAP) as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected. At Prometheus IP, we are able to rectify this error by appropriately addressing this anomaly. Similarly, our legal experts can effectively address notice of non-compliance amendment issued in response to filing an incomplete or non-compliant amendment.

Coordinating Examiner’s Interview on behalf of the Applicant

We can initiate a dialogue with the Examiner and preparing strategic document towards Examiner’s interview to expedite the prosecution at any time during the stage of USPTO patent prosecution.

Notice of Allowance/312 Amendments

We provide thorough analysis of the prosecution history, to identify the applicant and USPTO errors in the application, thorough proof-reading and checking of antecedent basis of the claims to prepare list of allowed claims and submit them by filling the appropriate form, issue fees and file it on behalf of the client to facilitate grant of error free patent.

Pre-Grant Proceedings Support

Patent Hearing Response Analysis and Drafting

At Prometheus IP, we can prepare to attend the patent hearing on behalf of the client to technically address the objections in the first examination report and initiate response post scheduling the patent hearing.