Pre-Grant Patent Services

Responding to Office Actions from the Examiner

Responding to an office action is submitting a responsive written reply back to the Patent Office. The USPTO sends communications to the applicant as action on the patent application happens. In particular, when the examiner examines the application, they will send communications called office actions that the applicant will need to respond to in order to continue seeking patent protection. USPTO office action responses must include a complete response to all issues raised in the office action. 

Office actions include both rejections and objections. The responses to office actions are written to provide a proper and complete response to all rejections and objections raised by the examiner. Carson Patents highly recommends patent practitioner help to respond to USPTO office actions. Contact us for help responding to an office action in your patent application.

Writing and Filing Patent Application Amendments

An office-action response may include amendments to the claims, specification, or drawings where appropriate. Amendments must comply with USPTO rules and may not introduce new matter into the application. A later development that lacks support in the original disclosure may require a separate filing strategy. Contact Carson Patents for help evaluating and preparing a response.

Writing and Filing New Patent Claims

Pre-grant patent services include revising the existing claims in an application. For pending patents, and in response to office actions, revising existing claims and writing new claims may become necessary. Generally, submitting new claims and revising and resubmitting existing claims occurs as part of office action responses. Above all, claims must be in proper form, not indefinite, and supported by the written description and the drawings. Carson Patents provides writing new and revised patent claims. Contact us to get new or revised claims written for your pending patent application.

Conducting Examiner Interviews

Patent examiner interviews are audio or video interviews with the examiner about the details of a patent application. Examiner interviews are conducted for many reasons. For example, we can discuss examination details and the reasoning for claims rejections and objections. Further, we can propose new or amended claims.

There are at least three examples of good reasons to conduct an examiner interview: sharing understanding of the invention, discussing the patentability of the claims, and to determine election options after a restriction office action. Examiner interviews can help determine the best way to respond to an office action. Frequently, examiner interviews can be pivotal during the prosecution of a patent application. Therefore, Carson Patents highly recommends patent practitioner help for examiner interviews.

Patent Petitions and Patent Application Actions

Additional filings depend on the application and procedural posture. The list below includes both pending-application matters and separately identified post-grant proceedings; not every item is available or appropriate in every case.

• Assignments 
• Citation of Prior Art 
• Double Patenting
• Ex parte reexamination — an issued-patent proceeding; see post-grant services.
• Expungement of Papers
• Patent Prosecution Highway (PPH)
• Patent Trial and Appeal Board Proceedings
• Petition for Retroactive Foreign Filing License
• Petitions to Make Special – Age and Health 
• Petitions to Review Previous Decisions
• Petitions to Revive Abandoned Applications
• Prioritized Examination (Track One)
• Protests
• Requests for Continued Examination
• Requests for Reconsideration & Appeals
• Restriction Practice (Proper Responses to Restriction Office Actions)
• Revival Based on Unintentional Delay
• Small Entity Entitlement
• Supplemental examination — an issued-patent proceeding, subject to its statutory requirements.
• Terminal Disclaimers