At Walsh IP, our goal is to provide high quality patent research and project management to patent attorneys and agents. As part of project management services, Walsh IP connects practitioners with each other for reviewing office actions and writing responses. This enables the small and mid-size practices to expand capacity and scope without hiring employees or managing contractors.

Office Action Review 

When an attorney receives a final or non-final office action, they send us the file wrapper or application serial number and commit to a $325 OA Review fee ($300 to the Contractor and $25 to WIP). WIP acquires cited prior art, generates template documents and schedules work for a third-party contractor. Within 5-7 business days, the attorney will receive a written report of 1-2 pages, containing:

OAReview.jpg

  • The name of the agent performing the OA Review

  • A discussion of the office action and potential strategies for navigating.

  • Recommendation related to examiner interview

  • The agent’s forecast of success (low, fair or high)

  • Normally, the response quotes range $700-$1000, and the WIP fee for response admin is $150.

Office Action Response 

OAResponse.jpg

After the attorney receives the OA Review, they can optionally order the quoted OA Response. Normally the response requires 5-7 business days to complete. An interview can increase this by several weeks, depending upon the responsiveness of the examiner. The attorney will receive a document responsive to the office action and in line with the strategy discussed in the OA Review. If drawing changes are required, then the original PDF files must be provided to Walsh IP.

Outcomes 

Between 2012 and 2020, a total of 157 cases have been sent for OA review. 116 of the 157 have proceeded to at least one OA Response. Of the 157, the results are as follows:

  • 46 allowances

  • 31 abandonments with no response,

  • 40 abandonments after at least one response 

  • 34 still pending and  

  • 6 filed POA changes

The allowance percentage in cases where at least one response is filed is 53% over all art fields combined (mechanical, electromechanical, software, electronics). As a comparison to the national average, 56% of all applications are allowed and approximately 10% are first action allowances, which means that 46% of applications receive an allowance after at least one office action.  

Testimonial 

"Walsh IP has been foundational to our utility patent practice, providing expert assistance with office actions and appeals for over 12 years. The experience of a former PTO Examiner cannot be matched for this type of work, and having that experience available through Walsh IP been a tremendous advantage for us." – Kevin Prince of QuickPatents, LLC (www.quickpatents.com) 

Pricing 

The OA Review is $325 for most art fields and the OA Response quote ranges from $700-$1100, depending upon the recommendation for examiner interview.  Contact to discuss appeal brief, PCT Chapter II, and US design responses.     

Billing 

Walsh IP bills bi-monthly for any services completed in the previous half month.  Full payment is requested within two weeks of receiving the invoice.  Payment options include check, PayPal, or credit card (a payment link is provided in the invoice). 

Availability 

Walsh IP is not a law firm and cannot provide legal advice. The services described here are only available to registered patent practitioners. In all cases, the agent’s name will be made known to the attorney and phone consultation is available, although additional fees may apply. The agents performing the OA Reviews and writing OA Responses are registered patent practitioners and have experience in patent examination at the USPTO.

Contact us to get started today!