What does a response to Office Action cost?

A response to Office action cost $3000-5000 typically. A response is filed by a patent attorney when a patent examiner rejects a patent application, and the cost reflects the effort and expertise it takes to guide your invention to allowance.

A response typically involves understanding why the examiner rejects the claims, then figuring out the best way to respond. There are two main ways to respond: argue or amend. An argument is an attempt to persuade the examiner that there was an error in the rejection. Amendments are changes to the claims that hopefully overcome the examiner’s rejection.

The examiner’s rejection is supposed to explain why the examiner thinks that the invention is not worthy of a patent. The rejection should cite prior art, typically other patents, that show the claims – and the examiner is supposed to explain how the prior art is interpreted. In some cases, the examiner may have overlooked portions of the prior art or your patent application, or the examiner may have made a mistake in their analysis.

An argument may politely point out where the examiner’s error may have occurred in a polite but convincing way.

An amendment may better explain the claims so that the examiner can allow the claims in light of the prior art. In some cases, an amendment may narrow the claims to get around a prior art reference. The Office action cost takes into account a good bit of work for the attorney.

When considering an amendment, the attorney must keep in mind the business purpose of the patent. In some cases, a narrowing amendment may make the patent useless from a business standpoint. In such cases, the attorney should consider whether or not to recommend abandoning the patent application.

In some cases, the attorney may wish to appeal the patent application. The appeal process is a two-stage process: the pre-appeal conference and the full appeal. The pre-appeal conference is a short argument that is considered by the examiner, the examiner’s supervisor, and a third examiner. I have had very good success from the pre-appeal conferences where the prosecution is reopened or the patent has been allowed. The full appeal is a much more costly and time consuming process where three administrative judges consider a very lengthy appeal brief that is prepared by the attorney. The full appeal process may cost in excess of $15,000 in some cases.

The average US case has 4.2 office actions per case. Be prepared to spend appropriate amounts to make sure you get the right claims – claims that make business sense.

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