Patents: How to Respond to an Office Action – Part I

Synopsis – Patent Law – Responding to an Office Action; Presentation for Lawline by Michael J. Feigin, Esq. – /
After applying for a patent on behalf of your client, the Patent Office will issue an Office Action when it has found an issue with your client’s application and needs you to solve the discrepancy. Patent attorney Michael Feigin takes us through the step by step process of how to handle an Office Action. Mr. Feigin begins with a brief introduction to the Office Action and how to draft a patent with the office action in mind. Furthermore, he also gives examples of rejections and how to avoid them and uses examples of patent applications that he has submitted and were approved by the patent office. Mr. Feigin then continues to describe the examiner interview and how to successfully pass it and complete the required written response. Finally, this course provides helpful examples of past Office Actions and how attorneys represented their clients in these situations. This course is extremely useful for all patent practitioners who will need to handle these inquiries from the Patent Office on behalf on their clients’ applications.

I. Introduction
II. Draft Patent with the Office Action in Mind
III. Non-Prior Art Rejections (e.g. § 101)
IV. Prior Art Rejections (e.g. § 102, 103)
V. Examiner Interview
VI. Response to an Office Action

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