An advisory action is mailed to the inventor when they file a response to a final office action without a request for continued examination (RCE). When the office action is made final, the examiner does not need to consider any of the inventor’s arguments or enter any claim amendments.
The advisory action only informs them that their time to respond to the office action is based on the mail date of the final office action. So, time is of the essence at this point. The patent application will be abandoned unless the inventor takes certain actions as explained below.
When is an advisory action triggered?
An advisory action is triggered when a response to the final office action is filed without an RCE. If you forgot to file the RCE, then you can still do so within six (6) months of the final office action’s mail date.
Remember to pay any extension fee if needed.
When do you have to take action after you receive an advisory action?
After you receive an advisory action, you must understand that the time to take action is calculated based on the final office action’s mail date, not the advisory action’s mail date.
Generally, the final office action will give you three (3) months to file a response without payment of an extension fee. You can still file a response after that time, but only with the payment of progressively higher monthly extension fees.
Does an advisory action mean that you won’t get your patent?
An advisory action does not mean that you can’t get your patent. Once you pay additional fees to the patent office you can continue the examination. Upon payment of those fees, the examiner must consider your arguments and enter any claim amendments. You can still get your patent.
If the additional fees are not paid, your patent application will be abandoned.
How do you continue the examination after you receive an advisory action?
After you receive an advisory action, you must file an RCE, file an appeal to the PTAB, file a continuation patent application or get the patent application in condition for allowance within six months from the final office action’s mailing date. Otherwise, your patent application will be abandoned after those six months.
I previously detailed my basic strategy for responding to a final office action. You should take the same approach when responding to an advisory action.
Now, it may place the patent application into condition for allowance within the time period for filing a response to the final office action. However, the deadline to avoid abandonment is always six (6) months from the mail date of the final office action. If you wait for the examiner to give you a notice of allowance, you are taking the risk that you might run out of time and your patent application will be abandoned.
When you are close to the six-month due date, you need to file the RCE, file an appeal to the PTAB or file a continuation as insurance to avoid abandonment of your patent application.