In the global layout of intellectual property, the United States, as an important innovation market and patent litigation highland, has distinct regional characteristics in its patent application and examination rules. For patent agency practitioners, accurately grasping the key points of revision and response strategies for examination opinions in US patent applications is the key to improving application authorization rates and ensuring patent stability. This article combines practical experience and systematically breaks down the operational points and precautions in US patent practice from two core modules: new application revision and OA response.

1、 New application for revision in the United States

The revision work of US patent applications is usually based on priority texts (such as Chinese new applications or PCT international application texts), with the core goal of ensuring that the application documents comply with US patent law requirements, laying the foundation for subsequent examination and authorization. The revision work mainly includes two dimensions: formal modification and substantive modification, and it is necessary to choose a reasonable application channel.

（1） Standardize file formats and avoid formal defects

The core of formal modification is to make the application documents comply with the format requirements of the US Patent Office and avoid affecting the examination process due to formal issues, mainly including the following points:

Supplement and improve the first paragraph of the manual:

Chinese new application texts usually lack relevant application explanations, and it is necessary to add or supplement this paragraph to clarify the route of the US application (such as PCT entering the national phase, partial continuation application, etc.), and fully record priority information (including PCT application number, filing date, and the application number and filing date of the basic priority).

It should be noted that if the original text of the PCT does not include a priority text incorporation declaration, the PCT cannot add this declaration when entering the United States, otherwise it will result in modifications beyond its scope.

Claim citation relationship and quantity adjustment:

To avoid additional official fees, multiple citations can be split into individual citations, and the new claims after splitting should be placed at the end of all claims; The total number of claims shall be controlled within 20, and the number of independent claims shall not exceed 3.

It should be noted that when merging claims, priority should be given to merging strongly related schemes to avoid excessive merging of unrelated schemes.

Abstract specification modification:

Suggest deleting the technical effect speculation, application prospect description, and comparison with existing technologies in the abstract to meet the formal requirements.

（2） Consolidate the foundation of authorization and optimize the scope of protection

The entity modification focuses on the authorizability of the claims and the reasonableness of the scope of protection, and needs to be adjusted in accordance with the core principles of US patent law:

Definition of Non General Technical Terms:

If there are non generic technical terms with no recognized meaning or ambiguity in the claims, clear definitions should be added in the specification.

Product claims and method features:

The method features recorded in the product claims are usually not considered by the examiner in the novelty examination, but will be taken into account in the infringement determination, forming a "double standard". Therefore, it is suggested to delete the method features in the product claims.

Additional support for functional limitations:

If there is a statement of "device+function" in the claims, it is recommended to supplement the specific implementation structure or method of the function in the specification. The more embodiments there are, the greater the scope of protection limited by the functionality.

Exclusion and modification of non eligible subjects:

Abstract concepts, natural laws, and natural phenomena are non patentable topics under US patent law, with abstract concepts (such as mathematical concepts, methods of organizing human activities, psychological activities, etc.) being the most common. There are two ways to avoid modifications:

One is to add practical application steps and clarify the specific application scenarios of the technical solution;

The second is to supplement physical entities (such as experimental equipment, processors, etc.).

Correspondence between the attached drawings and the claimed features:

The US patent law requires that each feature of the claims be displayed in the accompanying drawings. If there are features that are not displayed, it is recommended to delete the feature or modify the drawings to display the feature.

（3） Reasonably choose the application channel based on the extent of modification

For PCT applications entering the United States:

If there are no modifications, or if there are few modifications that do not exceed the scope, it is more appropriate to choose the regular 371 method to enter;

If there are many modifications (regardless of whether they exceed the scope), the bypass route is a more convenient choice due to its higher flexibility and freedom of modification.

2、 US OA responds to increase efficiency

In the process of patent examination in the United States, common examination opinion notices include restrictive requirement notices, non final examination opinion notices, final examination opinion notices, and guidance opinion notices (AA), and the response strategies for different notices have their own focuses.

（1） Approach to addressing the issue of singularity in restrictive notices

This notification is similar to the "lack of singularity" in Chinese patents, where the examiner usually issues it on the grounds of "not belonging to a general inventive concept" or "excessive search burden", requesting the applicant to choose an invention for further examination. There are three ways to cope:

Selection+Refutation:

Select a set of claims and argue that all claims meet the requirement of unity, with recommended reasons including "search does not increase the burden of examination" or "each independent claim has the same/corresponding specific technical features and contributes to creativity"; If the claim belongs to a combination of "product and its specialized production method/usage method/implementation equipment", it can also be argued for singularity based on this.

Only choose not to refute:

Directly select a set of claims for further examination, and unselected claims can be restored in subsequent examination by supplementing specific technical features or incorporating dependent claims.

Refuting only without choosing:

Not recommended as the examiner has greater discretion in refuting such objections, resulting in a lower success rate. Please note that if the subsequent plan is divided into separate cases, it is not recommended to refute it to avoid triggering duplicate authorization issues.

（2） Targeted response to non final review comments

This notice mainly involves issues such as novelty, ambiguity, support for instructions, defects in drawings, and duplicate authorizations. It is the core part of the OA response:

Innovative issues:

When making modifications, distinguishing features can be supplemented based on dependent claims, specifications, or drawings (the United States has relatively lenient requirements for modifications beyond the scope, and drawing features can be used as a basis for modification); The logical statement should be clear and concise, analyzing the undisclosed distinguishing features of each comparative document one by one.

Unclear about support issues with the manual:

Explanation support (112 (a)): If the examiner points out that the claimed features are not supported by the written description in the specification, it is usually necessary to explain and combine existing technical evidence to prove that the feature belongs to the existing technology.

Unclear claims (112 (b)): To address the issue of unclear terminology, it can be resolved by modifying the claims (such as incorporating limitations from the specification into the claims); If the term is not clearly defined, existing technical evidence must be provided to prove that it is a well-known term.

Defects in the attached image:

If the claimed feature is not shown in the drawings, the feature can be deleted or the drawings can be modified without exceeding the scope (based on the original description and detailed explanation of the modification basis).

Duplicate authorization issue:

Including statutory duplicate authorization (for identical inventions and creations) and non statutory duplicate authorization (for claims with the same substantive protection scope but no inventive step in distinguishing features). The coping strategies include: arguing that there are substantive differences in the claims; Amend the claims (delete duplicate claims or add creative features); Submit a final waiver statement for illegal duplicate authorizations.

（3） The final review opinion is to provide full relief and strive for authorization

After receiving the Final OA, the following response strategies should be taken within the statutory deadline:

Debate+Claim Reconstruction:

If there is still room for debate in the independent claims, creative reasons can continue to be stated; Or argue against a dependent claim and treat it as a new independent claim.

Revise according to the reviewer's opinion:

If the examiner recognizes the authorizability of a dependent claim, it can be incorporated into an independent claim and usually authorized.

Modification+Continuing Review Request (RCE):

If it is necessary to supplement technical features that have not been searched before, RCE must be submitted at the same time as the amended claims, and the examiner will conduct search and examination; For those who have not submitted RCE, the examiner will issue a notice of guidance and will not proceed with the examination.

（4） Guidance Opinion Notice (AA) Final Relief Path

If the response from Final OA is not accepted, the reviewer will issue an AA, at which point you can choose:

Submit RCE and proceed to the next round of review;

Appeal and seek rights through the Patent Trial and Appeal Board (PTAB).

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The practice of patent application and examination in the United States has strong professionalism and practicality. Whether it is new application revisions or OA responses, they must strictly follow the provisions of US patent law and the examiner's examination logic. The core point is that in the new application stage, it is necessary to balance formal compliance and entity optimization, and avoid review risks from the source; During the OA response phase, it is necessary to accurately identify the type of defect and provide a targeted response based on US patent law and examination practices that is reasonable and evidence-based.

For patent agency practitioners, continuously accumulating practical experience and gaining a deep understanding of the core principles of the US patent system are key to improving the quality of their business. I hope that the organization of this article can provide useful references for relevant practitioners and help promote the smooth layout of patents in the United States.