Please note that the US patent layout: the US patent OA process has these differences

As we all know, the politics, economy and culture of each country or region have their own characteristics, and the development history of the patent system is also different, which leads to differences in patent laws and regulations and operating practices in different countries or regions. In order to better carry out patent layout in different countries or regions, Nanjing Huaxun feels that this requires us to understand the differences in patent practice between different countries or regions.

At the beginning of the establishment of China's patent system, more reference was made to the German and European patent systems. U.S. patent law differs from Germany in that it primarily uses a "case law system". Therefore, there are many differences between American patent practice and Chinese patent practice. Understanding these differences will help Chinese applicants to file patent applications in the United States more effectively and economically, better communicate with U.S. patent attorneys, and better protect their rights and interests. By understanding U.S. patent practice, applicants can effectively take into account the characteristics of U.S. patent practice when responding to the review opinions issued by U.S. examiners, thereby increasing the possibility of authorization, saving application costs, and making the obtained U.S. patents more fully protected and used in the subsequent protection and implementation stages.

This paper briefly introduces the process characteristics of examination opinions (OA) in U.S. patent practice, helps applicants to further understand the U.S. patent examination opinion process, and then helps applicants to formulate response strategies more effectively and save application costs.

U.S. Patent Examination Opinion Process

Nanjing Hua Xun agents with rich experience in U.S. patent agency will find that the first OA is "non-final OA" and the second OA is "final OA". The main reason for this situation is that the United States Patent and Trademark Office stipulates that the examiner can only record the examination workload for him after the final OA is issued. This means that the examiner will issue the final OA "without hesitation" as long as the conditions for issuing the final OA are met. So, what are the conditions for issuing the final OA?

In fact, it is not certain that the final OA will be issued after the first OA. The United States Patent Examination Guide (Manual of Patent Examining Procedure) stipulates that the examiner can issue a final OA only when the specified conditions are met. Specifically, when one of the following 3 conditions is met, the examiner is allowed to issue a final OA:

1. In the reply to the non-final OA, the applicant only argues and does not modify his claim. If the examiner does not accept the argument and insists that his rejection remains unchanged, the final OA can be issued;

2. After the non-final OA is issued, the applicant submits IDS(Information disclosure statement). When the examiner plans to change the reason for rejection to the IDS, the final OA can be issued;

3. In response to non-final OA, if the applicant modifies the claim, the examiner can issue a final OA, and in the final OA, the examiner can change the applicable law or modify the rejection opinion.

Therefore, the applicant can consider how to formulate a strategy to reply to non-final OA according to the conditions that allow the final OA to be issued, and try to avoid falling into the above three situations, so as to avoid receiving the final OA, which can save the applicant's application cost to a certain extent.

Operational strategy to avoid receiving final OA

The following Nanjing Hua Xun US patent introduces several situations that can avoid receiving the final OA for the applicant's reference.

If the applicant finds that the examiner omits one or several features in the claim when commenting on the creativity of the patent application claim, even if the feature itself is not patentable, the author still suggests that the applicant clearly point out the missing features in the reply and argue accordingly, so as to prevent the examiner from issuing the final OA. In this way, the applicant actually got two chances to reply without paying the continuing examination fee. Since the more opportunities to respond, the more opportunities the applicant has to test the examiner's attitude, the more opportunities the applicant has to obtain a larger scope of protection.

In addition, when the applicant finds that the examiner thinks that one label in the comparison document is equivalent to or corresponds to two or more components in the patent application claim in the examination opinion, it is suggested to clearly point it out in the opinion statement, which can effectively prevent the examiner from issuing the final OA, and can also give the applicant more opportunities to reply and save the application cost.

In addition, when the applicant receives the final OA and finds that the timing of the final OA issued by the examiner does not meet the issuance conditions stipulated in the US Patent Examination Guidelines, the applicant may submit a corresponding statement requesting the withdrawal of the final OA. In this way, the examiner reissues the non-final OA.

Through Nanjing Huaxun's brief introduction to the process of American examination opinions, we hope to help applicants understand the OA process and operation strategies in American patent practice, so as to formulate more effective response strategies for American examination opinions and better help Chinese applicants to obtain American patent rights smoothly while saving application costs.