Patent Applicants

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During prosecution of a U.S. patent application, rejections may be received in either a non-final or a final office action. While the substance of the rejections can be the same, the applicant’s options for responding are quite different.

The first round of rejections (if any) by the patent examiner come in a non-final office action. In response, the applicant can submit arguments, make amendments, supply declarations and evidence, and replace or add new claims without restrictions, provided no new matter is added. Interviews with the examiner are also freely granted after a non-final office action.

If the rejections are not addressed to the examiner’s satisfaction, a second office action will be issued, and is generally made “final.” Examiners are allotted only a limited amount of time to devote to a patent application after final. As such, they are not obligated to enter, or give full consideration to, amendments submitted after final, nor are they obligated to grant interviews.

The accompanying chart, available via the form below, illustrates the most common options for an applicant to consider in responding to a Final Office Action.

Beginning at the top left, a first option is to file a response with arguments or only minor amendments intended to put the application in condition for allowance or in better condition for appeal. This may include, for example, amendments to accept allowable subject matter, adopt the examiner’s suggestions, address informalities, or cancel rejected claims.

A second option is to file a response under the After Final Consideration Pilot (AFCP) program. This fee-free pilot program gives the examiner additional time (approx. 2-3 hours) to consider more significant (but not major) amendments, conduct a supplemental search, and grant an interview after final. To qualify for the AFCP program, at least one of the independent claims must be amended and the amendments cannot broaden the scope of the claims. The AFCP program is a valuable tool that, even when it does not lead to an allowance, often at least leads to some helpful dialogue with the examiner. However, an AFCP request can be denied if the examiner determines that the amendments are too significant and cannot be considered within the extra time that is allotted under the program.

If a response after final, filed with or without an AFCP request, does not lead to an allowance, an advisory action is sent notifying the applicant. Unlike a non-final office action, the deadline to respond to a final office action continues to run unless and until there is an allowance, or a request for continued examination (RCE) or a notice of appeal is filed.

Therefore, when submitting a response after final, with or without an AFCP request, it is best to do so within two months of receiving the final office action. Not only does this leave more time to try to negotiate an allowance after final, but it can reduce any extension of time fees that may be necessary to file a subsequent RCE or notice of appeal if no agreement is reached with the examiner. When the initial response to the final office action is filed within two months, extension of time fees are calculated from the later of three months after the final office action or the mailing date of the examiner’s advisory action. In either case, the latest date to respond, after which the application will go abandoned, is six months from the date of the final office action.

A third option for responding to a final office action is to file a response with an RCE. Though more costly, this option ensures that all amendments, regardless of the scope, are entered and fully considered. An RCE essentially resets prosecution back to the beginning such that the next action by the examiner will be either an allowance or a non-final office action. When it is clear that the applicant’s amendments will raise significant issues requiring a new search, filing an RCE may be the way to go. An RCE can also be filed after an advisory action to have a previous response entered and considered.

A fourth option is to file a notice of appeal to the Patent Trial and Appeal Board (PTAB). In doing so, the applicant can begin the appeal process right away or optionally file a pre-appeal brief request for review. The latter entails first submitting an abbreviated appeal brief that is evaluated by a panel of patent examiners. If the panel concludes that the assigned examiner rejections were in error, prosecution will be reopened, and an allowance or non-final office action will be issued. If the panel agrees with the assigned examiner’s rejections, the appeal process with continue and a full appeal brief must be submitted by the applicant.

A fifth option (shown on the far right of the chart) is to file a continuation patent application and allow the pending application to go abandoned. An applicant might consider this option for the possibility, though slight, of getting a different examiner, or to delay prosecution while preparing a new claim set to enter by preliminary amendment. Also, if the applicant has already filed one RCE during prosecution, it may actually be cheaper to file a continuation application. As of the date of this article, the USPTO fee for a second or subsequent RCE is greater than the USPTO fees to file a new application.

There is no best or worst option for responding to a final office action in the USPTO, and the results will vary depending on the particular examiner’s willingness to consider new issues after final. At Dilworth IP, we work closely with our clients to determine the most appropriate option for responding to a final office action on a case-by-case basis.

Benjamin Lehberger

 

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This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.