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Responding to Office Actions

The applicant and attorney receive an 'Office Action' from the patent office detailing objections or rejections. They then discuss strategies and prepare a formal response, often involving amendments to claims or arguments.

Dialogue

Listen and follow along with the conversation

1
Patent Attorney (Male)
Good morning, Ms. Chen. I'm afraid we've received an Office Action for your patent application regarding the drone stabilization system. It landed in my inbox just yesterday.
2
Applicant (Female)
Oh, right. I was expecting that. What's the gist of it? Is it a rejection or just some objections we need to address?
3
Patent Attorney (Male)
It's primarily objections based on prior art. The examiner cited two previous patents that they believe anticipate some of your claims, particularly those related to the sensor fusion aspect. They also raised a formality issue with the abstract.
4
Applicant (Female)
Sensor fusion, really? I thought our approach was distinct enough. Can we argue against that? And the abstract is usually an easy fix.
5
Patent Attorney (Male)
Yes, we certainly can. I've already drafted some preliminary arguments for the sensor fusion claims, highlighting the unique algorithmic implementation. We'll need to submit a robust response within three months, which gives us some breathing room.
6
Applicant (Female)
Three months sounds manageable. What about amending the claims? Do you think we'll need to narrow them down, or can we push back more aggressively?
7
Patent Attorney (Male)
We'll definitely consider amendments, especially for the broader claims. My preference is to try arguing first, but we should prepare alternative claim language as a backup. It's often a back-and-forth process with the examiner.
8
Applicant (Female)
Okay, that makes sense. So, what are the next steps? Do you need any more technical details from my end, or are you working on the response independently for now?
9
Patent Attorney (Male)
For now, I'll refine the arguments and proposed claim amendments. I'll send you a draft for your review next week. Please be ready to provide further technical details or clarifications if needed, especially regarding how your system differs from the cited prior art.
10
Applicant (Female)
Understood. I'll make sure to prioritize that. Thanks for staying on top of this, I appreciate your proactive approach.
11
Patent Attorney (Male)
My pleasure. We'll get this addressed. I'll be in touch next week. Have a good one.

Vocabulary

Essential words and phrases from the dialogue

Office Action

A formal notice from the patent office pointing out problems or rejections in a patent application. It's like a feedback letter that requires a response.

prior art

Existing inventions, patents, or publications that came before your invention and can be used to challenge its novelty. In patent discussions, it's key to show how your idea is different.

claims

The specific parts of a patent application that legally define what your invention protects. They are like the boundaries of your idea that you want to defend.

objections

Official reasons from the patent examiner why parts of your application are not acceptable. It's common in legal processes to address these step by step.

amendments

Changes or modifications made to a patent application to fix issues raised by the examiner. This helps make your application stronger and more approvable.

robust

Strong, solid, and effective. In professional contexts like this, it means a response or argument that is well-prepared and hard to challenge.

breathing room

Extra time or space to handle a situation without too much pressure. It's an idiomatic expression used when deadlines are not too tight.

proactive

Acting in advance to deal with an expected problem rather than reacting later. It's a positive trait in business and legal work, showing initiative.

Key Sentences

Important phrases to remember and practice

I'm afraid we've received an Office Action for your patent application.

This is a polite way to deliver potentially bad news. 'I'm afraid' softens the message, making it less direct. Use it in professional emails or calls when sharing unwelcome updates, like in business or legal contexts.

What's the gist of it?

A casual way to ask for the main point or summary of something. 'Gist' means the essential idea. It's useful in conversations to quickly understand complex information without details, common in meetings or consultations.

It's primarily objections based on prior art.

This explains the main issues clearly. 'Primarily' means mainly or mostly. The sentence uses technical terms but in a straightforward structure. Use it to summarize problems in reports or discussions, helping intermediate learners practice describing causes.

Can we argue against that?

A question suggesting a challenge to an opinion or decision. 'Argue against' means to present reasons why something is wrong. It's practical for negotiations or debates, like in legal or work settings, and shows how to seek options politely.

We'll need to submit a robust response within three months, which gives us some breathing room.

This states a requirement and its benefit. The relative clause 'which gives us...' explains the advantage. Use this pattern to discuss deadlines and positives, common in project management. 'Breathing room' is an idiom for extra time.

What about amending the claims?

'What about' introduces a suggestion or alternative idea. It's a simple way to propose changes in discussions. Useful for collaborative talks, like brainstorming solutions, and helps learners practice question forms for options.

It's often a back-and-forth process with the examiner.

Describes a repeated exchange of ideas. 'Back-and-forth' is an idiom for ongoing discussion. This sentence uses present simple for general truths. Use it to explain typical processes in business or legal scenarios to set expectations.

Thanks for staying on top of this, I appreciate your proactive approach.

'Staying on top of' means keeping control or updated on something. This expresses gratitude professionally. It's great for emails or calls to thank colleagues, teaching polite appreciation and idioms in workplace English.