(56)Office action responses and PTAB appeals
We answer rejections on the record, through final rejection, RCE practice, and appeal to the Patent Trial and Appeal Board.
What we handle
- Non-final and final rejections
- Responses to rejections under 35 U.S.C. 101, 102, 103, and 112, argued from the references themselves.
- Restriction and election
- Elections made with continuation strategy in mind.
- Examiner interviews
- Requested when a conversation will move the case faster than another paper.
- After-final practice and RCEs
- The right next step after a final rejection, chosen with you.
- Ex parte appeals
- Notices of appeal, appeal briefs, and reply briefs before the Patent Trial and Appeal Board.
- Cases taken over
- Pending cases transferred from another firm, with the file history reviewed before we act.
What to send us
Everything we need to open the matter in one email. Hold back confidential technical detail until we confirm the conflict check and engagement.
Build the email- The application number and the office action
- The response due date and any extension you will accept
- Your instructions or the outcome you want
- Claim amendments you would or would not accept
- For a transferred case, a new power of attorney
How the matter runs
The same five steps on every matter, reported to you at each one.
Action received
You send the action, or we receive it as attorney of record and report it.
File history reviewed
We read the complete history and the cited references before drafting.
Recommendation
A short report with the due date, the options, and our recommendation.
Response filed
Filed on your instruction and reported to you.
Next step
Allowance, a further action, or appeal, reported as it arrives.
Questions firms ask
Can you take over a case from another firm?
Yes. We need a power of attorney naming us, and we review the file history before the next response.
Should we file an RCE or appeal?
It depends on whether the examiner and you disagree on the facts or the law, how strong the record is, and the cost and time of each path. We recommend one with reasons.
Do you read the cited references?
Always. We read every reference the examiner relies on, and the examiner's search notes, before we draft.
How do you report an office action?
In writing, with the response due date, the rejections in plain terms, the options, and our recommendation.
Ready to send the matter?
Email the number, the deadline, and the parties. We reply with the conflict check and the engagement terms.
Email ck@ckiplaw.com