Responding To Foreign Office Actions

A U.S. patent attorney is usually not licensed to prosecute patent application outside of the United States. The one exception I know of is the right to represent U.S. applicants before the PCT receiving office in Europe. As a result, substantially all foreign prosecution must be handled through foreign associates. The upside to that rule is that a good foreign associate knows all the local procedures, and can often provide valuable insight into claiming and other prosecution strategy. In some instances, especially in Eastern European countries, I have found that the foreign associates are extremely detail oriented and can make a huge contribution in terms of reviewing chemical formulae, reviewing the details of drawing figures, and so forth.

On the other hand the foreign prosecution usually takes place after the U.S. prosecution has at least commenced, and usually after the U.S. attorney has had several rounds of arguments with the U.S./PCT examiners. Thus, the prior art and the various arguments and counter-arguments of the case are often better developed in the mind of the U.S. attorney. To some extent it is not cost-effective to have each of the foreign associates wade through the entire mental process all over again.

Our preference is therefore to write out the arguments for the foreign associates, and have them reformat and otherwise modify the arguments for use in their respective countries. Sometimes this approach triggers considerable back and forth exchange of emails or faxes with the foreign associate, but more often than not the foreign associate just files the arguments we draft. In many instances those arguments are the very same arguments we employed successfully in the U.S. prosecution. Indeed, we often amend the foreign applications to conform to whatever the claims were issued in the U.S. Not only does that help with consistency of the claims across the different countries, but there is substantially no chance of getting a claim allowed aboard if it was not allowable in the U.S.