Service
Utility Examination Office Action Response (Level 2)
Regarding choosing service quality levels, that mostly depends
upon your budget and how strong you want your patent to be. Generally, if
your budget is not low, and you want to better
overcome rejections and preserve as much patent scope as possible, then the more
comprehensive quality level is suggested. If your budget is very low, and
getting protection covering your specific product is more important, then the
Basic quality level is suggested. If you are somewhere in between, then
the "Good" quality level is recommended.
Please keep in mind that the
Examiner will almost always have you narrow the claims far more than you could
(budget permitting) get by negotiate back and forth a few iterations. When
budget is limited, you should always indicate to us that we should narrow the
claims as much as possible to help assure allowance as opposed to our fighting
for the broadest claim scope/strength. If you instruct us to narrow
your claims, we will take this to mean that you want to narrow to the
maxim towards achieving a next office action allowance. Keep in mind
that, generally, more conservative narrowing tends to increase prosecution
cost and time, and the more aggressive the narrowing the lower the future
cost. So, please make clear if you are requesting maximum
narrowing or not.
Also, it is important that
you understand that "rejections" are not actual rejections per
se. We almost always make legal arguments and claim language
negotiations that overcome the "rejections". That is where the
different service level options come into play. The higher levels afford
more sophisticated arguments that have a better chance of winning and
preserving your patent scope and strength, and the lower level is less so.
Among other things, the
"more comprehensive" level includes the possible drafting of new
claims to improve original one(s) and multiple amendment/argument
strategies. The more comprehensive approach will usually have two or more
lines of (usually more sophisticated) arguments and/or amendments to overcome
the rejection. The "more comprehensive" level may also reduce
future prosecution costs when at least one the multiple amendment/argument
strategies is liked and accepted by the Examiner thereby avoiding more
rejections and the associated costs to continue prosecution and responses. For
the “Basic” level service, the effort is focused on narrowing the claims
as (expected to be) needed to get a next office action allowance. Under
current law, you lose patent protection on anything similar to what was given
up by the claim narrowing. Thus, if patent strength and scope is
more important than other factors such as speed and cost, then you should avoid
the “Barebones” level. The “Barebones”
approach will usually just accept any allowed claims and maybe include minimal (usually
extremely simple) single line argument(s) and/or amendment(s) to overcome the
rejection only for a subset of claim(s) and the lead reference focusing on maximally
narrowing claims to get allowance. Generally, no effort is made in
the "basic level" to draft new or broadened claims or make multiple
amendment/argument strategies typically required to keep or achieve maximum
patent protection scope and strength. If the Examiner does not accept the
simple narrowing approach, then prosecution will need to be continued and
further office action responses prepared and filed. The
"Good" level strikes a cost effective balance between the "more
comprehensive" and “Basic” levels.
It may be helpful to know
that often the Examiner thinks the cited prior art is so strong that he/she
needs a lot of detailed convincing to believe otherwise. That is, in such
cases the Examiner is more committed to believing the cited reference(s) is/are
strong and it takes a lot of effort to get him/her to change their general
opinion and admit that they are completely wrong. They don't like to
admit that easily. So the basic approach runs the risk that the surgical
amendments and arguments done at that level don't exactly hit the Examiner's
"gut feeling" about lack of novelty, and he'll just restate his
position in other terms and make the rejection final requiring another
round. It may work just fine, but when budget is available, we usually
prefer to hit each reference with a sledge hammer instead of try to kill the
fly with a finger. Also, because the basic level seeks to narrow the
claims more than enough than what may have otherwise been needed if a more
sophisticated approach was taken; whereas, the "more comprehensive"
level additionally tries more conservative approaches towards preserving more
patent scope by focusing more on clever arguments and case law citations.
If the USPTO is not persuaded
by our legal response a Request for Continued Examination (RCE) will usually be
required for them to consider further negotiations in your case. Hence, the "more comprehensive" approach is always
suggested when budget permits. When you have significant financial interest in
patent scope and strength, then you should select the "more
comprehensive" or "top attention" level. When budget is a
constraint, and it is more important to just get a patent on at least a portion
of your claim scope, then the basic level is best.
Also, please be aware that
any new claims you have in mind may be added to your application in our
response. If you have claims that you felt are fully
described and supported by the original specification, but were
not originally fully claimed, please prove provide us a list of all new claims
(in plain English) that you want to add so that we can give you a quote for
adding them. Please note that new claims (of things already disclosed in
your patent specification) are allowed, but the USPTO does not allow any new
matter (i.e., stuff never disclosed originally) to be added or claimed.
Also, the USPTO will charge you a fee (e.g., ~$150) per new claim you add,
which is beyond our quote to do the legal drafting work.
How to Engage our Services
1) Configure the
above linked shopping cart options (if any) according to
what best fits your situation, goals, and/or budget. (you may
always edit your cart to make any changes- see below for details)
a) The
service item may have a text entry field named "Please
provide any Special Instructions...", where you should enter any
specific guidance or information that may be helpful for us to properly process
your order (e.g., any case number we've assigned in the subject line
above, deadline situations, how this order relates to any other
orders, etc.)
b) The
service item configuration total price will be reflected in
the "Selected Combination Total" line item below any
options menus. Likewise, the "Service ID" will
be updated to encode your configuration selections.
2) Click
the "select service" button to put the service item you
configured into your shopping cart. You will notice shopping cart at the top
right of the page, which indicates how many items it currently
contains. Click that shopping cart icon anytime you want to see what items
are in your shopping cart, and you'll notice a pencil icon on
each item which enables you to go back and edit the item, and save
your edits by again clicking the "select service" button.
3) Click
the "Checkout" button to begin the checkout
process. On the Checkout page, enter your email address,
client status, and PoC information for the legal service you are ordering. Then
click the “next intake page” button to proceed to the payment indication page.
4) Make
your payment off-line (i.e., not through our website) using one of the
methods specified in the below postscript of this quoting email. Currently,
online payment methods through our website are not implemented yet.
5) After
you made your payment off-line, return to the above payment page on
our website where you will specify how much you paid, by what means,
and some kind of transaction receipt/info for us to research and match
it up to your order to approve it.
a) NOTE:
Most of our services require 100% prepayment of the quoted
fee; however, if our emailed written quote indicates a lesser
prepayment amount then instead of our standard full prepayment policy
for reduced fixed-fee work, you can take advantage of a reduced minimum down
payment fee (e.g., 50% of the quoted fixed-fee, plus any rush fee quoted) to
start patent work on each case. The remaining fees are later due at least upon
our completing the 1st draft of the ordered legal service for your review/revision
and/or our filing.
b) If
you paid using methods like PayPal/Zelle/check/money
order/bank wire/bank deposit/ etc., then during the above
linked checkout process select the "off-line" payment
option, which will ask you for which "off-line" payment
means you use and a copy of the transaction information so that we may
manually confirm and process it to credit it to your account.
6) After
you register your payment per the above, our system will guide you to our online
new case intake forms to gather your administrative information for this new
patent case (e.g., POC, contacts, inventors, assignees, work request
details, service agreement, etc.).
7) You
will be emailed a link to proceed to our secure client portal dashboard to
securely submit your materials, documents and instructions for our
legal work.
8) Our
team reviews all your submissions and works with you to validate/improve
anything needed for us to properly do our legal work.
Pricing
| Price | 0.00 |
|---|---|
| Minimum pre-payment | 100 |