What is a smarter way to respond to multiple Office Actions in your patent application?
90%. That is the probability that your utility nonprovisional patent application will be rejected. In fact, your utility patent application may receive multiple Office Actions. Whether you are dealing with a non-final Office Action or Final Office Action, when does it make sense to file a CIP instead of an Office Action response? In this post, we will consider smarter alternative strategies for responding to certain types of rejections.
Need smarter ways to deal with a patent Office Action? Email patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to explore smarter strategies for obtaining your utility patent.
Responding to an Office Action With a Short Specification
Our firm receives a fair amount of inquiries from potential clients who had someone else write their patent application. Occasionally, the potential clients either wrote the patent application themselves or had the application drafted for a low budget price.
In these situations, we typically see a scant specification. Many important details are missing. As a result, it may be particularly challenging to respond to an Office Action as the specification lacks sufficient support for effective claim amendments. It is a classic example of you get what you pay for.
What can go wrong with a short utility patent application?
Here’s the problem. If we were to attempt an Office Action response, the bare-bones specification gives us few options for claim amendments. We have to play with the hand we’re dealt, and it’s often a lousy hand.
So here’s an unconventional approach. Instead of responding to the Office Action, what if you file a CIP application to add new matter? Filing a continuation-in-part application enables you to add new details that can then be claimed.
A CIP application gives you a new hand with better cards because you can add new matter to the specification. For example, you can add new features which are not shown in the prior art patents found by the examiner. By adding such features to the specification, you can then claim those features and argue that your new claims are allowable over the prior art.
What are drawbacks to filing a CIP instead of an Office Action response?
So if a CIP is so great, why not file this all the time instead of an Office Action response? As explained below, the drawback is that newly added subject matter will get a later filing date.
Newly added subject matter gets a later priority date. Suppose, for example, your original patent applications discloses A and B, and you file a CIP to add C.
While a claim for AB would get the earlier priority date, a claim for ABC would get the later filing date of the CIP. And a later priority date means more available prior art references that can be cited against. If your parent application was filed in 2018, for example, while your CIP was filed 2022, then examiner may use prior art dated after 2018 and before the 2022 filing date to reject your new claim for ABC.
Furthermore, you might not have any substantial new matter to add. If you’ve received multiple Office Actions, chances are that your claims have been rejected under Section 103 as being obvious over the prior art. So any new content being added and claimed must be nonobvious.
When must a CIP be filed relative to the Office Action response deadline?
The parent application with the outstanding Office Action must be pending in order to file a CIP. One option is to file the CIP within the 3-month extension-free deadline of your OA. If you need more time, then file a request for the required number of extension months in the parent application and then file your CIP.
Can you pay more USPTO fees responding to a Final Office Action than filing a CIP?
A Final Office Action typically requires you to file a Request for Continued Examination along with your response. For a small entity, USPTO fees for an RCE are $544 for the first request and $800 for subsequent requests.
USPTO fees for a CIP start at a bit over $600 for a small entity. So the government fees for a first RCE are almost as much as those for a CIP.
Need a smarter approach for responding to an Office Action?
Reach out to US patent attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you craft a smarter way to respond to your Office Action.
