Responding to Office Actions

In addition to prior art searching, NLPatent can support responses to Office Actions by offering tools that provide a structured comparison of cited art and challenged claims. Features like Relevance Analysis and Ask NLPatent can help you assess the examiner's position and prepare a more informed response.

This guide outlines a typical Office Action workflow using NLPatent. A video version is also provided right below:

Step 1: Start a New Search

Click “New Search” to begin.

If the application is public, use the Patent Number option. Enter the application number to initiate the search.

If the application is not public, use the Natural Language option and paste in the claim(s) under review.

Then click Start Search.

Step 2: Add Cited Patents to Save List

In the top right, use Add Manual Prior Art to input the patents cited in the Office Action.

Ensure the patent numbers include jurisdiction codes (e.g., US1234567) and do not contain commas or formatting characters.

These patents will appear in the Saved tab for analysis.

Step 3: Run Relevance Analysis

From the Saved tab, use the Relevance Analysis feature on each cited document.

This will generate a side-by-side summary highlighting similarities and differences between the cited patent and your claim or application text. The output can offer a useful reference point alongside the examiner’s remarks, particularly when assessing the strength of cited references.

Step 4 (Optional): Ask Targeted Questions

If specific features or distinctions are identified in the Relevance Analysis, you can use Ask NLPatent to query further.

Example questions:

• What does this patent say about (Insert feature)?
• Is a (insert feature) described in detail?

Responses are extracted directly from the cited document and may assist in identifying points of technical or conceptual distinction.