Navigating Office actions and patent appeals

Responding to Office actions

After the patent application is filed, it is assigned to a USPTO patent examiner for review. The examiner will initially issue a non-final Office action, which typically rejects some or all of the patent claims, based on perceived conflicts with one or more prior art patent disclosures. Mr. Germinario personally researches the prior art cited in the Office action and, in concert with the inventor, formulates a response strategy that may include amendments to the claims or legal and technical arguments refuting the examiner’s position.

After submitting a written response to the non-final Office action, Mr. Germinario’s practice is to conduct a telephone interview with the examiner and his or her supervisor. Such examiner interviews often result in a resolution of issues, which paves the way to the allowance and issuance of the patent.

Continuations and patent appeals

For the great majority of our firm’s patent applications, patentability issues are resolved prior to the examiner’s final Office action. In the minority of cases where a final rejection of the patent claims is issued, Mr. Germinario guides his clients through the choice of either a modified “continuation” patent application to avoid the examiner’s grounds for rejection, or an appeal of the examiner’s rejection to the USPTO’s Patent Trial and Appeal Board (PTAB).

Drawing on his long experience in patent prosecution, Mr. Germinario helps the client select the most cost effective alternative. Although appeals occur infrequently in Mr. Germinario’s practice, he has been successful in every appeal he has pursued to date.

The Law Office of Thomas J Germinario

154 Route 206 S
Chester, NJ 07930
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Call for a consultation:
(908) 879-0091