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Format/Process for responding to patent examiner feedback?

Format/Process for responding to patent examiner feedback?
« on: April 27, 2018, 03:25:36 PM »
I apologize if this question has been covered elsewhere but here goes.  I submitted my non-provisional  patent application and got a response back from the examiner. He cited several prior patents and applications that he believed covered my claims. In some cases he is right however for the most important claim I believe mine is clearly unique, however my original wording and drawing needs to be updated to better describe the uniqueness.

So my question is: What is the format for responding? I have looked on the USPTO site and elsewhere and can’t seem to find clear guidance. I am going to have  lawyer review my response although I did not use a lawyer for the first go- round, but I want to get my response drafted first. 

More specifically, do I redraft the entire patent since the specifications, drawings and claims will all change and send it back? Is there some intermediate step?

Note I will not be adding claims, just removing some and clarifying others.

Thanks in advance for any guidance.
« Last Edit: April 27, 2018, 08:32:33 PM by Brad »


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Re: Format/Process for responding to patent examiner feedback?
« Reply #1 on: April 27, 2018, 08:39:43 PM »
You have to be a bit careful here because you are not allowed to add any "new matter" to your application so you cannot change your drawing or update your text to add in any new information which would include clarifications and adding additional description.

Have you tried calling the examiner?  You are allowed one phone call (called an 'interview') with the examiner and if they know you are a solo inventor many of them will try to help you out and may even update your claims for you to get you a patent allowed (although the scope and strength of your patent may be questionable).

If it were me I would try to call the examiner first and see if they can point you in the right direction.  You can also call the patent office for fee help through the Pro Se program:

Finally to answer your question you can see responses filed in other cases as all patent records are open to the public and accessible through the Public PAIR system:

My free patent template:

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Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.

Re: Format/Process for responding to patent examiner feedback?
« Reply #2 on: April 29, 2018, 12:08:04 AM »
Many Thanks Brad!

That is extremely helpful...


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