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Navigating The Final Office Action: How To Respond And What To File
Are final office actions the end of your patent journey? The short answer is, no. Contrary to the word ‘final’, it is not the end of the road. You can still take recourse to some available options and continue on the path of securing a patent. In this article, we take an overview of some such remedies to a final office action, along with their pros and cons.
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What Is A Final Office Action?
A final office action denotes that a patent application has been rejected twice. It is issued by the USPTO’s examining attorney after they have raised all legal problems with the application at least once previously. The causes of rejection usually center around two themes i.e., non-obviousness of the invention and lack of novelty. A final office action gives the applicant one last opportunity to file a response. The deadline for submitting a response is 3 months from the date of issue.
Responding To A Final Office Action
The answer to a final office action is either to make the application allowable or to take another action in order to keep the application pending. To keep an application pending, the following options are available:
Request for Continued Examination (RCE)
With an RCE, an applicant can request the patent examiner to review a patent application after the requisite changes have been made. It is recommended to file an RCE only if the applicant desires to make further claim amends or arguments that are substantive in nature. It may also serve well to ask for an examiner interview prior to filing an RCE to determine the appropriate course of action.
The most direct way to approach the problem is to request an examiner interview. This brings you in contact with the examiner over a phone call, in a web conference, or in person. The purpose of an examiner interview is to understand their reasons for rejection and explain the specific benefits of the invention. Interviews usually last between 30-60 minutes, and it is best to thoroughly prepare for them in advance. During the course of the interview, the examiner may also suggest the best way forward with the application.
After Final Consideration Pilot Program 2.0 (AFCP)
One can file for an AFCP when the amends are narrow in nature and if suggested by the examiner during the interview. It allows the examiner additional time to search prior art and consider an after-final response. For an AFCP to be valid, it must include an amendment to at least one independent claim without broadening its scope. To ensure that an AFCP is granted, the applicant must strive to narrow the scope of the claim amendment so that the examiner is not burdened with another extensive research.
Continuation Patent Application
A continuation patent application allows the applicant to refile a patent application in order to pursue claims similar to it. The claims in the continued application can seek to broaden the original claims or correct any weaknesses in them.
An appeal is the absolute last resort that an applicant must take. One can file an appeal with the Patent and Trademark Appeal Board if they believe that the examiner is incorrect in their observations. Once an appeal is filed, a new set of examiners are appointed to look into the matter. An appeal can only be filed if the claims have been rejected twice.
Filing a Response Within Two Months
While the official response time to all final and non-final office actions is 3 months, a special deadline of 2 months applies to final office actions. If a response is filed within 2 months, then it minimizes the extension fee that may occur if an advisory action is issued.
An advisory action is sent to the applicant when they file a response to a final office action without requesting a continued examination. If the examiner is of the opinion that the amendments are inadequate and may require a prior art search, then they issue advisory action so the RCE may be filed by the inventor. In case the after-final response only consisted of arguments, the advisory action implies that the examiner was not convinced by the points put forth.
The suitable response for an advisory action is to file an RCE so that the examiner gets more time to review the prior art. However, if no further amendments or arguments are to be included, then filing for an appeal is the last resort.
Your response to a final office action will determine the fate of your invention. Given that much is at stake, it is best to rely on professional help in dealing with the situation effectively. When it comes to office actions, prevention is better than cure.
A majority of utility applications receive at least one office action, but by involving an expert firm during the patent prosecution process, you can follow an approach with the least hindrance.
Experienced attorneys can assist you in filing an application accurately with narrow claims. They also have a better understanding of the filing and examination process and can help in averting common mistakes that can be a drain on the time and resources of a business. It is best to follow the correct procedures and minimize errors right from inception in order to avoid a long-drawn struggle in the later phases of the process.
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