IP: Responding to USPTO office actions

Thinking ahead to litigation, reexamination and post-grant procedures

When responding to an office action from the Patent and Trademark Office (PTO), a representative must carefully consider not only the potential impact of amending claims, but also the possible longer-term ramifications of her arguments. By doing so, the practitioner can avoid unnecessarily limiting the protective scope of her claims. While most representatives are aware of the effects that prosecution history estoppel or disclaimer can have on a patent during litigation, practitioners should also consider how their remarks might be interpreted during a reexamination. Additionally, as implementation of post-grant procedures begins, practitioners should monitor developments of the procedures as they pertain to remarks, amendments, claim construction and equivalents.

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Contributing Author

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Andrew Weaver

Andrew Z. Weaver is a partner at Novak Druce + Quigg where his practice is focused on the prosecution and reexaminations of patents. He can be reached...

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