A final office action means the examiner has rejected the patent application and does not need to consider any further claim amendments and arguments. The examination has ended and the patent application will be abandoned. Please note that a final office action is never final. The examination can always be continued by filing a request for continued examination (RCE), a continuation application, or an appeal to the Patent and Trademark Appeal Board (PTAB) before the deadline to respond to the final office action.
A nonfinal office action is typically the first written evaluation of your invention. It will list all of the objections and rejections for rejecting the patent application. Any response to the nonfinal office action must be entered and fully considered by the examiner.
How many responses does the examiner have to consider?
The examiner has to fully consider one written response, at a minimum, and hold one telephonic interview with you. As such, these communications with the examiner should be prepared with care.
Here’s the typical progression.
During the examination stage, the first office action is typically a nonfinal office action. You have one written response that you can submit to the examiner. Thereafter, the second officer action is typically a final office action.
You can file a response to the final office action, but the examiner does not need to consider it. Typically, when you file a response to the final office action, the examiner will send you an Advisory Action indicating that your arguments and claim amendments raise new issues and will not be considered.
Unless you file the RCE, file a continuation application, or appeal the case, your response will not be considered and your application abandoned.
What options do you have for responding to a non-final office action?
You have all options open when you respond to a nonfinal office action.
- You can make claim amendments.
- You can add claims.
- You can present new arguments in support of patentability of your claims.
- You can amend your application to the extent that you are not adding new matter.
- You can call the examiner for an examiner’s interview.
The examiner has to consider all of your claim amendments and arguments when you respond to the nonfinal office action. You can also call the examiner (i.e., examiner’s interview) before you submit your response which is typically what I recommend that you do.
You can send your draft response to the examiner to use as talking points during the examiner’s interview. During the interview, the examiner will provide comments on that draft response. In light of the examiner’s suggestions, you can amend your response so as to increase the probability of allowance.
You have to file the written response within three months of the mail date of the office action. You can file the response after three months of the mail date but no later than six months with the payment of progressively higher extension fees.
What options do you have for responding to a final office action?
Your options for responding to a final office action are limited unless you file a request for continued examination or your request for an after-final consideration pilot (AFCP) is granted by the examiner.
With the RCE, you have all of the options above when you file your response. However, without the RCE, you can file a response with claim amendments and arguments but the examiner will typically send you an Advisory Action which states that your response raises new issues and will not be considered.
The time period to respond to the advisory action is six months from the mail date of the final office action, not the mail date of the advisory action. Don’t get confused about the due date to take action on the final office action. Otherwise, your application will be abandoned.
Within six months from the mail date of the final office action, you must file the RCE, file a continuation application, or an appeal to the Patent and Trademark Appeal Board to avoid abandonment of your invention rights.
What is an After Final Consideration Pilot (AFCP) Program?
The after-final-consideration pilot program allows the examiner more time to consider your claim amendments and arguments if the examiner believes that an allowance is close. Without the AFCP, the examiner doesn’t have any time to consider your response unless it is to fix minor errors. They don’t have time to consider new issues.
How do you ask for approval under the after-final consideration pilot program?
You need to prepare a draft response that includes claim amendments and arguments. You would then conduct an examiner’s interview using your draft response since talking points. At the end of the interview, you can ask the examiner whether they believe that an allowance is close and if the draft response can be considered under the after-final-consideration pilot program.
The AFCP gives the examiner additional time to consider the claim amendments and arguments. It also saves you the cost of an RCE.
Filing an ACP request does not extend the deadline to file the RCE, continuation application, or appeal to the Patent and Trademark appeal board. Unless you receive a notice of allowance, you must file one of the following: an RCE, a continuation application, or an Appeal to avoid abandonment.
When should you file a Request for Continued Examination (RCE)?
You should file an RCE if you do not want to delay the examination of your patent application and want your patent sooner than later. If you disagree with the examiner and believe that you are correct on the law and the facts, you may want to consider appealing the case to the Patent and Trademark Appeal Board.
An RCE is a request for continued examination. As discussed above, the examiner only needs to consider one of your written responses fully. Thereafter, the examiner’s job is done. You can have additional responses that the examiner must consider by filing the request for continued examination. Otherwise, the examiner will stop working on your case. Your patent application will go abandoned unless you file the RCE or file an appeal to the Patent and Trademark Appeal Board.
When should you file a continuation patent application?
You should file a continuation application if you want additional time to consider your options and keep your invention patent pending for the time being. By filing the continuation application, your application is given a new serial number and we’ll have to wait for examination on a first come first serve basis.
In my experience, sometimes your continuation application will be examined out of turn but in many cases, your examination will be delayed by at least one or two years. In that period of time, you we’ll be able to delay patent-related legal expenses and consider your options.
When should you appeal to the Patent and Trademark Appeal Board?
You should appeal your case to the Patent and Trademark appeal board if you believe that the examiner is incorrect and you can’t resolve the issue. Any claim amendments that the examiner would accept would be unacceptably narrow for you. The appeal will take a few years to resolve and during that period of time, you will not incur patent-related legal expenses.
DO NOT FILE THE APPEAL if you can narrow your claims to an acceptable level and the examiner will allow the case. By all means, get your claim allowed. Later on, you can submit your broader claim in a continuation application and then appeal that case if you truly want broader claims.