How should an applicant respond to an Office Action?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-10 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. When responding to an Office Action, applicants should: Include the application number, 4-digit art unit number, and examiner’s name Include the 4-digit confirmation number on every paper filed Address all rejections and objections raised in the Office Action Provide arguments for allowability as required by 37 CFR 1.111 The MPEP section 707 states: Replies to Office actions should include the application number as well as the 4-digit art unit number and the examiner’s name to expedite handling within the Office. Further, applicants are encouraged to include the 4-digit confirmation number on every paper filed in the Office. For extensive amendments, it’s preferable to have them filed by the attorney or agent of record, as this provides a better record in the file wrapper, including applicant’s arguments for allowability. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Response to Office Actions Requires Specific Information MPEP 707 Recommended 4-Digit Confirmation Number Required for Every Filing MPEP 707 Response to Final Office Action Required to Avoid Abandonment MPEP 714 Authorization Required Within Last Office Action Time Period MPEP 714 Required Respond to Examiner's Reason for Allowance MPEP 707 Permitted Office Actions for Ex Parte Reexamination MPEP 707 First Office Action Requires Informal Patent Application Notice MPEP 707 Office Actions for Inter Partes Reexamination MPEP 707 Drawings Must Be Submitted to Office of Data Management After Allowance MPEP 714 Recommended Examiner May Rely on Applicant Admissions for Rejections MPEP 707 Permitted Other Related FAQs 5 FAQs Collapse What are the key elements patent examiners check in amended applications...