Automated response tools could take the stress out of drafting office action responses

Obtaining a patent grant requires an efficient office action response. Communication from the patent examiner depends on a correctly signed, written response from the applicant, known as a shell response, which must address all grounds for rejection and opposition made by the examiner in order for the application process to continue. Preparing such responses can be time consuming, but it does not have to be so – an automated shell response tool could make the process much easier.

A response is typically prepared by a paralegal, who outlines the issues that require a reply after receiving an office action from a patent examiner. An attorney then adds the technical and legal arguments. Manually creating a shell response takes between half an hour and two hours, depending on the objections raised in the office action and errors can creep in. Here, AI can be beneficial.

Automation of shell response

Automation and AI in patent drafting tools carry out the tedious, time-consuming editing and formatting tasks. In a shell response, a typical automation tool would add:

• bibliographic data;
• standard front-page details;
• headers and footers;
• sections presenting the objections; and
• complete listing of the claims with the corresponding status indicator.

All this can be automated with minimum effort, which allows attorneys to focus on drafting technical arguments and amending claims.

Using an automated shell response tool saves both time and money by:

• improving accuracy of office actions;
• reducing office action response drafting time;
• automated retrieving of cited reference;
• including option of a customisable template; and
• streamlining office action rejection analysis.

Some of the best shell response automation tools available are:

• SmartShell, in which attorneys can directly edit the response to add the technical and legal arguments according to objections; and
• PatentOptimizer, which generates a comprehensive office action shell response using a standard or custom template. It includes objections, rejections and cited references, so that professionals can easily analyse selected office actions, preview potential response approaches and capture prior art references cited in the office action for quick review and further analysis.

Future visions for automation tools include:

• reviewing office actions, provide the summary and conversion of previous claim set to an editable version by means of optical character recognition;
• identifying types of objection raised in the office action;
• claims identifiers; and
• calculating fees (if required).

Comment

The usage of automation tools rationalises drafting and analysis and allows attorneys to concentrate on more technical and legal work. Further, the best automated tools for patent professionals can generate high-quality work, thereby allowing firms to build strong relationships with clients.