Expediting Patent Prosecution After An Advisory Action

It can be difficult to advance prosecution of a U.S. patent application efficiently and effectively after prosecution has been closed and an Advisory Action has been mailed. Various U.S. Patent and Trademark Office (USPTO) programs are available to expedite prosecution (see Mintz's previous article about speeding prosecution), but a final Office Acton and then an Advisory Action being mailed makes most of those programs unavailable. This article explores various strategies that may allow an applicant to expedite prosecution after the mailing of an Advisory Action.

Advisory Actions do not have prescribed written examiner content, so the content can vary widely by examiner. Per preferred USPTO practice, Advisory Actions should include substantive replies to new arguments regarding particular claim(s) and/or specific prior art. Even if such replies are present, however, they may be confusing or seem insufficient to an applicant. The applicant may therefore be unsure of