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

Amendments to patent applications become necessary for many reasons. A complete USPTO office action response may require an amendment. For example, if updates, corrections, and explanations are needed, submitting an amendment is necessary. The amendment documents also need to be clear, complete, and in proper form. In other words, details matter. Carson Patents provides all patent services for writing and submitting amendments for patent pending applications. Contact us to get an amendment written for your patent application.

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

Pre-grant patent services includes many other things such as submittals, petitions, and actions. Contact Carson Patents for help with any patent, patent application petition, or change action. The following is a list of the most common petitions and patent application actions needed.

• Assignments 
• Citation of Prior Art 
• Double Patenting
• Ex Parte Reexamination
• 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
• Terminal Disclaimers 

Utility Patent Application Office Action Response Example A

We wrote and filed a patent application for a new electric appliance. The USPTO patent examiner found: 1) a spelling error; 2) an inconsistent element reference between the figures and the written description; 3) objections to the dependent claims for lack of proper antecedent basis; and 4) rejection of the independent claims as obvious to a person skilled in the art. Carson Patents amended the claims, figures, and specification to correct for 1, 2, and 3 at no cost, because we view these corrections as administrative errors. Correcting for 4, the claims rejection, required writing 17 new claims and amending the written description. Our fee was $1060.

Utility Patent Application Office Action Response Example B

An inventor previously used an inventor assistance “service” who had written and filed a patent application for a new electric appliance. The USPTO patent examiner found: 1) numerous spelling and grammar errors; 2) improper drawings; 3) the abstract was written in improper language; 4) objections to all claims for lack of proper antecedent basis and lack of support in the written description; and 5) rejections of all claims as obvious to a person skilled in the art. Carson Patents conducted an examiner interview to discuss the objections and rejections for $840. We amended the claims, abstract, figures, and specification for $2480.