Well-informed, experienced patent attorneys strive to respond to office actions as quickly as possible. Office actions on a patent application are issued from patent examiners at the USPTO. Getting a patent is a balancing act between two objectives:

  1. having a patent that is narrow enough to be valid over the prior art; and
  2. having a patent that is broad enough to capture infringing products and activities.

In most cases, the patent examiner concedes the invention is new and useful but wants to make sure the patent claims are balanced. After all, the patent grant is a powerful legal right….a 20-year monopoly and restraint of trade.

It is human nature to forget

Short and long term memory are distinct features of the human brain and patent examiners still have hundreds of thousands of backlogged cases. For any individual patent examiner, your application may be one of hundreds he or she is assigned to. Quickly responding to office actions improves the chance the case will keep moving along.

If we wait until the 3-month statutory deadline to respond (or longer with
extensions) we lose the opportunity to return the case to the examiner while the application is still fresh in their mind. If an examiner picks up our response many months later it is like starting over from the beginning.

Don’t Lose Patent Term

Prior to June 8, 1995 patents enjoyed a 17-year term from the date of issue. Therefore, we were not in such a hurry to respond to office actions. However, patent terms are currently 20-years from the date of filing. Therefore, the length of usable patent term is diminished by delay. Consequently, if you do not respond quickly to patent office actions you are giving up potentially valuable patent term.

Contact us Now and Keep the Momentum

Do not delay…work with your patent counsel to promptly respond to your pending office action.

Recipes fall within patent-eligible statutory categories, since a final food product is “a composition of matter,” and the steps to create the food product represent a process. For patentability, the recipe passes the first hurdle. However, to be patentable, the recipe must also be new—as in, no one has ever performed the steps and/or formed the product before—as well a nonobvious. The nonobvious threshold is often the death of a recipe patent.

Category: Patent

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Anton Hopen

U.S. Patent Attorney with smithhopen.com.