Office Action Second Opinion
I used to write these rejections.
Let me read yours before you answer it.
A former USPTO examiner reads the office action and the applied art, and tells you what the rejection is actually worth — whether the reference teaches the limitation it is cited for, and whether the combination holds up.
Where it helps, I also search the scope you are thinking of narrowing to before you commit to it, and draft the response itself for your signature.
Analyst work product, delivered to you as counsel. You decide the response and you sign it.
$500 flat · scope search $500 · drafted response $1,000 · all three $1,250
first-matter rates — standard $750 / $750 / $1,400 / $1,750
Why this exists
Half the argument in a rejection is in what the examiner didn't say.
A §103 rejection arrives as a paragraph of citations and a sentence of motivation. What it does not tell you is which limitation the examiner is least confident about, whether the secondary reference was picked because it teaches the feature or because it was in the same class, or how much of the mapping would survive being read closely.
That reading takes two to four hours and it is rarely the best use of yours — especially on a first action, where the response strategy is set before anyone has confirmed the art says what the rejection claims it says.
I read the references in full and tell you which parts of the rejection are load-bearing.
What you get back
Three separate jobs. Buy one, or all of them.
They are priced apart because they are genuinely different work. Reading the art the examiner already cited is not the same job as searching art nobody has cited yet, and neither is the same as writing the response.
1 · Verification
$500 first matter, then $750 · about a weekThe art the examiner already cited, read against one limitation. No new searching — this is about whether the rejection stands on what it claims to stand on.
- Limitation-by-limitation check of the mapping
- Every limitation the examiner mapped, checked against the cited column and line. Where the reference does not teach what it was cited for, that is called out with the passage that shows it.
- The weakest link in the rejection
- Which single limitation the rejection depends on most, and how well it is actually supported — the place where a traversal has the most to work with.
- Whether the combination holds
- The stated motivation to combine, assessed against what the references themselves say, including whether either one teaches away from the combination.
- Which claims are actually clear
- Dependent claims whose features are unaddressed or thinly addressed by the applied art — the ones worth pulling up if the independent claim has to narrow.
2 · Scope check
$500 first matter, then $750 · about a weekA narrowing amendment surrenders the equivalents for that limitation permanently, and it is usually made without anyone checking whether the narrower scope is clear either. This checks it first.
- What the examiner finds next
- An independent search of the same classification space, so you know whether a proposed amendment walks into art that is already sitting one class over.
- A written search record
- Classes searched, queries run, and what was ruled out. If I find nothing new, you can see exactly where I looked before concluding that.
3 · Drafted response
$1,000 first matter, then $1,400 · about two weeksThe response written for your signature, arguments only, with the verification underneath it — so the arguments stand on what the art says rather than on a summary of what it says. You review it, you adopt it, you sign it, and I never appear in the file.
- Remarks, reference by reference
- Each applied reference addressed against the limitation it was cited for, with the column and line cites in the text, ready to edit rather than ready to rewrite.
- Amendments, only with the scope check
- Claim amendments are +$200, and I will not draft them without the scope search. Narrowing toward a scope nobody has looked at is the one thing here that can actually cost you something.
The line, stated plainly
I am not registered. You are, and you sign everything.
I am a former examiner and a technical analyst, not a patent attorney or agent. I do not represent applicants, I never communicate with your client, I do not appear on anything filed, and I render no opinion on whether a rejection can be beaten.
Where I draft, I draft for you, as your technical specialist — you review it, you adopt it, and you sign it under your own registration. That is the ordinary arrangement between a practitioner and a non-practitioner assistant, and the responsibility for what gets filed stays with you, exactly as it does for every other person in your office who prepares work you sign.
Which means my client is the firm, not the applicant. If you are an inventor without counsel, I am the wrong vendor and I will tell you so — there would be nobody to sign.
Who is reading it
Both sides of the same document.
- › USPTO Patent Examiner — searched, applied art, and wrote rejections under examination standards. I know which parts of a rejection an examiner will defend and which parts were filler.
- › Patent Engineer & Analyst — Ensemble IP, Dominion Harbor, Concept IP. Patentability, validity, FTO and landscape work on both the assertion and defense sides.
- › Mechanical Engineer, NSWC — 8 years at Naval Surface Warfare Center. Mechanical, electromechanical and sensing hardware.
- › Search engineer — the multi-source search stack behind the invalidity practice runs the art check here too.
Strongest in mechanical, electromechanical, sensing and hardware subject matter, and in mobile communications, wireless and signal processing from the analyst years. Send it and ask — if it is outside what I can read properly, I will say so the same day rather than take the file.
This is a prior-art second opinion — §102 and §103. Eligibility under §101 and formal §112 questions are legal arguments and belong with you, not with an analyst.
Fee
Flat fees. Quoted before the work starts, invoiced after it lands.
Fixed numbers, whatever the art turns out to look like. No hourly, no estimate that grows, nothing to approve mid-way. The first figure is your firm's first-matter rate — one time, and the standard rate is printed beside it so you can see both before you decide anything.
For scale: the whole package is about twelve hours of associate time.
All three, flat
Verification, scope check and the drafted response, amendments included. About two weeks. Bought separately the same work is $1,700, so the package saves roughly a quarter — and it is the only way to get amendments drafted.
Send an office action →Verification
One office action, the applied references read in full, one limitation, about a week. Rush where my queue allows — ask.
Scope check
A search of the scope you are proposing to narrow to, run before the amendment commits you to it. About a week.
Drafted response
Arguments only, drafted for your signature, verification included. About two weeks. Amendments are +$200 and come only with the scope check.
If it is a capacity problem rather than an art problem, I also take overflow — responses, IDS, whatever is stacked up — quoted per matter, always under your signature.
- › The office action PDF and the claims as they currently stand
- › The application number, or the published application if it has published
- › Your response deadline, and any amendment direction you are already considering
- › Nothing else — I pull the applied references and the file wrapper myself
Working together
- Conflicts cleared first — before any file is accepted
- Mutual NDA — signed before an unpublished application changes hands
- Unpublished disclosures are treated as trade secrets — and are never put through a third-party AI service
- Analysis only — no legal opinion, no drafted response, no appearance in the file
- Work product is yours — delivered to you, for you to evaluate independently
- Invoiced on delivery, Net 15 — by ACH or check, against an invoice number your AP can process
Send me the next one that lands on your desk.
One office action, $500, about a week — a cheap way to find out whether an examiner’s read is worth having on your files, before you decide whether to send me the drafting too.