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An office action response is a response given by an applicant of a patent to the PTO during the prosecution of the patent application. A person who responds to an office action should be aware of techno legal language as they would be amending a part of the objected claim elements or arguing on the objections raised by the patent examiner. The response thus prepared must possess logical and analytical reasoning to broadly interpret and set aside the objection raised in the office action.
The best person to respond to an office action is the patent drafter or the patent attorney who has a thorough knowledge on the invention and the patent law. Before drafting the application, the resource is expected to conduct a thorough prior art search. This knowledge on the application enables them to judge the application hand in hand with the examiner who cites reasons for not allowing a patent application. It is possible that during the search for prior art, the resource might have come across the cited patent or similar patents but still went ahead to draft the application as the point of novelty is different or missing in the identified prior art reference.
Before drafting a response to an office action, one must follow these golden rules stated below:
The above points are good to follow to understand the objections better and draft a clear and concise response while maintaining the cool demeanor which might also help win your case.
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