Patent Prosecution refers to those actions that occur between filing of a patent application and its final outcome i.e., patent grant, abandonment etc.
How does one begin?
Given the limited time accorded to every patent application the patent practitioner should accord due attention to the merits of the objections/rejections raised in the Office Action. Begin with an impartial review of the entire application and the cited prior arts to objectively identify the rationale behind the rejection raised by the Examiner. Each and every rejection must be addressed with due courtesy and based on the situation appropriate claim amendments may be put forth. While it is very important for the patent practitioner to have a complete technical analysis of the application, it must also be kept in mind that he/she is the official representative for the Applicant/assignee and must take their final opinion as to how to go ahead with the case. Once the response strategy is shared with the client, it is important that the client inputs are taken to finalize the draft response.
Prior arts cited for Novelty: For citations that have quoted for novelty rejections it must be carefully examined if each and every claim element of the subject application is being implicitly or explicitly disclosed. Once that is affirmed, we need to identify that claim embodiment that differentiates the subject application from the cited prior art and argue regarding the same. Since, each and every invention is either an improvement over the existing technology it is important to properly define how the subject application intends to solve a particular problem in the technical field in question.
Prior arts cited for Obviousness/Inventive Step: It gets a little trickier to tackle obviousness rejections. Usually Examiner tends to cite the same prior art cited for novelty or may combine them with more citations to arrive at the subject invention. In this case, it is very important to identify if there is any reason to combine the references in order to arrive at the subject invention. If the patent practitioner proves that there is no rationale to combine the references, or undue experimentation is needed to arrive at the subject invention, he can amend the claim by adding elements that differentiate from the citations and how this unexpected results or obvious advantages would not have been possible just by merely combining discrete claim elements by a person having ordinary skill in the art. Another important strategy is “teaching away”. Look for information that clearly or implicitly discloses why the aforesaid claim elements in the prior arts may not be combined as it may be harmful or disadvantageous. Teaching away arguments albeit very rare but are one of the most persuasive strategies to circumvent obviousness rejections. It is a good strategy to directly paste the requisite sections or portions from the cited references wherever possible and avoid excessive paraphrasing to avoid the lost in translation problem.
Clarity/Indefiniteness: With reference to clarity or indefiniteness try to amend the claim by citing ranges for claimed features with ambiguity. Specifically avoid awkward claim limitations and do not add substantially/approximately in the claims that impart ambiguity.
Lastly, utmost care should be taken to avoid verbose arguments that may create problems in post grant phase.