How to Handle Office Actions More Efficiently

Written by Jack Liput | 3/25/20 5:34 PM

Even during these uncertain times, the USPTO maintains that operations will continue without interruption. That means while you are busy adopting new remote work processes and ensuring your team is healthy, office actions are still being issued.

To add to the stress, our analysis of office action volume at the USPTO shows that we're headed into a busy time of the year for office actions. Based on published data from 2016-2018, the second quarter sees slightly more office actions compared to other quarters. It should be noted, however, that the difference between the second quarter volume and the lowest volume quarter (Q4) is less than 12%.

Looking at week-to-week data, we can spot some recurring trends in OA volume:

There’s a commonly held assumption that the end of the quarter or end of the year brings a rush of work, and our data confirms it. (Note that 2019 and 2020 data is grayed out here, as there are a decent number of pending applications still unpublished. While the data for this year is incomplete, you can see it’s trending similar to 2016-2018.)

That spike you see at week 40? That's the end of Q3 – and the end of the USPTO fiscal year. As you can clearly see from the chart above, this is consistently the highest volume week for office actions.

Our weekly analysis also found that the end of the first quarter (around week 14) and the end of the second quarter (around week 26) were consistently among the top five highest-volume weeks in 2016, 2017, and 2018. Many of the lowest-volume weeks occurred between October and January in those three years.

As the data shows, we’re approaching a busy time of the year for office action responses – and your team is probably feeling it. Here are four tips to help your team through it.

Keep an eye out for examiner errors. The heavy workload may cause examiners to overlook crucial details in your application. Keep a keen eye out for misjudgments in the examiner’s rejections and objections, as well as silly mistakes like missing punctuation, typos, incorrect paragraph numbers, incorrect prior art citations, and caption errors.
Review past analytics to shape your strategy. We always recommend clients consider the track record of their specific examiner and art unit before crafting a response. Identify winning prosecution strategies, cross-reference with past decisions made by your examiner, and structure an approach that takes both histories into account. Communicating this data with clients and partners can help set expectations for the road ahead.
Hire more staff -- or offload the workload to a tool (like Juristat OAR). Knowing that this time of the year brings a spike in work, you may want to consider aligning your recruitment and hiring efforts so that new staff members are trained and ready to meet the demand. Or, consider offloading the work to an AI-powered tool like Juristat OA Response (OAR) which detects new office actions from the USPTO in order to prepare response packets.
And don’t procrastinate. In the world of patent applications, timing is key. Most replies to office actions must be received within 6 months from the mailing date, and all OAs can avoid extension fees by sending a few months earlier than that deadline. But rushing through a response can result in errors and ultimately, additional costs.

Offloading tedious tasks is one way to bring more efficiency to your workflow. Juristat OAR uses AI to simplify the whole process, automatically generating a digital packet with all the necessary documentation and background information you need – allowing you to focus on more strategic, valuable work. See what a Juristat OAR packet would look like for your firm.

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