A final office action indicates that a patent application has been rejected twice. The examiner does not need to consider further amendments and arguments. However, there are ways to continue the examination. This article will also cover a basic strategy for responding to a final office action.
What is an office action?
An office action on the merits is a written explanation by the examiner for why your patent application is being rejected.
The primary reasons for rejecting a patent application are that the claimed invention does not meet the requirements of (1) novelty and (2) nonobviousness. The novelty requirement simply means that the claimed invention must be absolutely new compared to the existing technology (i.e., the prior art). The nonobviousness requirement means that someone of ordinary skill in the relevant field could not easily make the claimed invention based on the existing prior art.
During the examination, we can submit arguments and claim amendments to convince the examiner that the claimed invention is novel and nonobvious. If we are successful, the examiner will mail a notice of allowance.
What is a final office action?
A final office action means that the examiner has already rejected your patent application. Typically, the second office action will be a final office action.
At this point, the examiner does not need to enter any claim amendments or consider your arguments for patentability if doing so causes a substantial burden on them. Unless you are changing a simple typographical error in the claim, all claim amendments and arguments are considered a substantial burden on the examiner. Therefore, they will make the second office action final.
How do you continue the examination after a final office action?
There are five (5) ways to continue the examination (i.e., argue for patentability) with the examiner.
First, a request for continued examination (RCE) can be prepared and filed with the patent office along with a response to the final office action. The examiner must then enter your claim amendments and consider your arguments for patentability. The next office action after submitting the RCE will be a nonfinal office action. You can then submit another response. After that, the next office action will be a final office action. You can file as many RCEs as you wish to continue arguing for patentability.
Second, you can conduct an examiner’s interview. The interview can take place via telephone, web conference, or in person. Most interviews are conducted over the phone due to costs and efficiency.
Third, you can file an AFCP. Typically, when the issues are narrow and the examiner believes that a few amendments would lead to allowable subject matter, they may recommend that another response be filed and considered under the AFCP program. This program is usually suggested during the interview.
Fourth, you can file a continuation patent application that claims priority to the current patent application. The continuation patent application places the patent application at the back of the line for examination. So, if you want to slow down your expenses, file the continuation patent application.
Fifth, you can file an appeal with the patent and trademark appeal board. If you believe that the examiner is incorrect in their assessment of novelty or nonobviousness, this is a great way to have a new set of examiners look at the merits of the examiner’s rationale. The cost is about the same as a response and RCE but the time delay is significant. As such, this is another way to delay expenses.
The basic strategy for responding to a final office action
The basic strategy for responding to a final office action is to conduct an examiner’s interview via telephone. You can glean so much more information during a phone call. I’d typically have the inventor on the call as well. When attorneys provide arguments, they are merely attorney arguments. But when the inventor states information, that tends to carry more weight with examiners. At least, that has been my experience.
Examiners are typically very helpful in guiding the prosecution to allowance. They may even suggest claim amendments.
During the interview, you will get a sense of the examiner’s likelihood of granting a patent. Based on the interview, the examiner might suggest a response under the AFCP. Alternatively, the examiner might request the filing of an RCE. If the examiner is difficult or will not budge from a stance that you believe is wrong, you can decide to file an appeal.
If you are running out of funds but want to keep the patent application pending, you can file an appeal or a continuation patent application. This allows your application to remain pending so that you can fight for the patent in the future.
What are the deadlines for responding to a final office action?
You can file a response within 3 months of the final office action’s mailing date. If you file the response after 3 months, you have to pay progressively higher extension of time fees. To continue the examination, you must file an RCE, an appeal to the PTAB, or file a continuation patent application. Otherwise, your patent application will be abandoned.
If you file a response within two months of the mailing date, the examiner is required to render an advisory action. This is a cursory office action stating that the examiner will not enter your requested claim amendments or consider your arguments. If you file a response without an RCE, the patent office will only send you a notice of abandonment.
So, after you receive the final office action, be sure to take the necessary steps to avoid abandonment of your application.