Understand the objection.
Read the examiner’s reasoning and cited references in the context of the claims and the application. Identify the relevant technical differences.
OFFICE ACTION RESPONSES
The examiner said no.
What is the next move?
A response should address the examiner’s reasoning and preserve the claim scope your software business cares about.
THE PROBLEM
Getting past a rejection
is only part of the decision.
Your startup has invested in an application. Now an examiner has raised objections or cited references. You need to understand the response options without losing sight of whether the resulting claims would still cover the feature that matters.
THE QUESTIONS BEHIND IT
What is the examiner actually objecting to?
How do the cited references compare with our invention?
Would the proposed amendment leave our product advantage outside the claims?
HOW IAF HELPS
Answer the examiner.
Keep the business purpose in view.
IAF examines the rejection, cited material, and support in the application. Jurgen weighs arguments and amendments against the technical distinctions and the commercially useful scope worth retaining.
Connect the response to support.
Tie proposed arguments and amendments to what the application describes. Examine the effect of the proposed changes on the claims.
Review the commercial consequence.
Ask whether the resulting scope would still reach the product or implementation that gives the invention its business value.
MAKE THE NEXT STEP PRACTICAL
Know how the fees apply
to your application.
IAF prepared the application
The first Office Action response is included in the $4,000 application fee. Each subsequent response is $1,500.
The application came from elsewhere
Each Office Action response is $1,500. Scope, government fees, and any third-party costs are discussed separately.
Restriction or election requirement
Included for applications IAF prepared. For applications prepared elsewhere, $1,000 per requirement.
Send a general introduction and mention any response deadline. Share the Office Action and confidential application details through the private engagement. No response outcome is guaranteed.
WHAT FOUNDERS ASK
A little more clarity.
Can you respond to an application another attorney drafted?
IAF offers Office Action responses on applications prepared elsewhere for $1,500 per response. Jurgen will discuss the matter and the scope before work begins.
Should we just narrow the claims until the examiner agrees?
The response needs to engage with the examiner’s reasoning while considering what the amended claims would mean for the business. Jurgen evaluates that decision against the application’s support and technical distinctions.
LET'S TALK ABOUT YOUR STARTUP
Discuss your examiner response.
Start with a general introduction. Discuss scope and fees before professional work begins.