An office action (OA) refers to a document that a patent examiner prepares and shares when he/she finds an issue in a patent application or a patent drawing. The most common office action received on design patent drawings by patent applicants are related to the consistency of drawings, line thickness as well as difference between claimed and unclaimed parts.
In this article, we will discuss the steps one should take to respond to an office action received on design patent drawings.
Step 1: How to Read an Office Action
The notification date of an OA is as mentioned on the first page. The period for filing a response to an OA varies from one to three months from the date of notification. Image 1 below shows the first page of an OA.
Further, image 2 below shows the second page of the same OA which mentions the actual time provided by the patent office to respond to the OA.
Generally, the statutory period to respond to an OA is six months from the date of receiving the notification mail. However, the patent office can shorten the period to one, two, or three months. In the example below (image 2), you can see that the statutory period for response is three months from the date of mailing.
Step 2: Instructions Provided by the Patent Examiner
The patent examiner provides a brief description of the drawings along with rule numbers that a professional patent illustrator can read easily. It is important to read every detail provided by the examiner and understand the drawings according to his/her perspective. Thereafter, the applicant must find a solution to create or revise the drawings to satisfy the examiner’s need as well as to clearly show the patent details.
Note: You must read the office action carefully as the patent examiner provides the reasons for rejecting the claims. These reasons can help in making modifications to the patent application and overcoming the rejections.
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Step 3: How to Read the Drawings
To effectively respond to an OA, one must know how to read the new or already filed patent drawings. It is important to first view the overall drawings and their requirements. Thereafter, you should take the necessary step for creating new drawings.
Step 4: Preparation of Drawings
Preparing formal drawings by following the instructions and taking references from previous figures is the most important step when responding to an OA. While preparing drawings, you must either maintain or increase the quality of drawings. For instance, in image 4 above, the details of the drawing are unclear and difficult to understand. Therefore, one must update these details while maintaining consistency with all figures. You can see the revised part of the drawing in image 5. In case you replace a drawing in the sheet, you can add a “replacement sheet” as per the guidelines.
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Step 5: Final Review of Drawings
In this step, you must review the modifications by taking projections of the illustrated details from all drawings and checking their consistency to eliminate chances of further rejections. Here, you must provide high-quality drawings along with different line types to show the claimed and unclaimed parts for better understanding.
Step 6: Drafting Response to the Office Action
It is important to draft a response to the received OA after modifying the drawings. You must share point-wise remarks to address various concerns, objections, or rejections in a separate word document. For instance, the grey part of Image 4 now portrays the unclaimed portion (as shown in Image 5). Therefore, you should share the following response with the examiner:
“Regarding the concern about the surface depicted in Image 4, replacement sheets attached to properly show the detail as an unclaimed surface with the uniform broken lines in image 5, thereby addressing the said concern. No new subject matter has been added. Therefore, withdrawal of the examiner’s objection in this regard is respectfully requested.”
If you introduce a new line pattern (dash line), then a statement about broken lines should be added (see the response below).
“The broken lines in these drawings show portions of the (name of the invention) that form no part of the claimed design.”
It is a common practice among inventors to file a design patent application to protect the appearance of their invention. Although an applicant tries to submit a flawless application, sometimes errors creep in. This in turn leads to rejection of the application followed by the issuance of an OA. It is imperative to submit a timely reply to the OA to continue the prosecution of the patent application. PatSketch’s Office Action Solutions help the clients to overcome objections or rejections raised by a patent examiner. Our team has substantial experience in responding to such objections or rejections. Click here to know more about this service.
– Punit Mehta, Vikas Kaushik (Illustration), and the Editorial Team