After a patent application is filed, your patent attorney normally becomes the primary point of contact with the USPTO. That does not mean the inventor or business should be left out of important decisions.
You Should Be Kept Informed
You should ordinarily receive copies of significant documents, including the filed application, Filing Receipt, Office Actions, cited prior art, amendments, responses, interview summaries, and notices of allowance.
Understanding Office Actions
When an Office Action is issued, your attorney should explain more than the fact that claims were rejected. You should understand:
- which claims are affected;
- why the examiner rejected them;
- which prior-art references are important;
- the proposed response strategy; and
- whether claim amendments could affect commercial value.
Review Important Claim Amendments
Claim amendments deserve particular attention. An amendment may help overcome an examiner's rejection, but it may also make the patent easier for competitors to design around.
Engineers and inventors can play an important role during this process because they may recognize technical differences that are not immediately apparent from a patent or publication.
Protecting Commercially Important Claim Scope
Before a significant response is filed, it is useful to review the independent claims and any proposed amendments. The question is not simply whether the amendment can obtain a patent. It is also whether the resulting claims still cover the commercially important invention.
Decisions You Should Help Make
Your attorney should also discuss major strategic decisions with you, including continuation applications, requests for continued examination, appeals, significant claim narrowing, and abandonment of commercially important subject matter.