Responding to a Final Office Action From the U.S. Patent and Trademark Office

A “final” USPTO office action does not mean that prosecution has ended, but that the examiner is cutting off the applicant’s right to change the claims in the application.

Worried because you've received a "final" office action from the U.S. Patent and Trademark Office (PTO)? Take heart: final isn't as final as it might sound, and your application hasn't been decided on yet. Rather, receiving such a letter means that the examiner is cutting off your right to change the claims in the application, and possibly giving you a last chance to reply to earlier requests. At this juncture, you, as a patent applicant, have several options.

Complying With the Examiner’s Request

The path of least resistance is to simply comply with the patent examiner's instructions. Your claims can perhaps be amended as suggested by the examiner. Typically, this will involve some further work by your patent attorney, narrowing or shifting the claimed patent.

Applicants are often hesitant to give into the examiner, however, since narrowing their claims could hurt their ultimate goal of having some degree of market power that would be conferred by a broader patent.

Convincing the Patent Examiner

An applicant can ask the patent examiner to reconsider a final office action. This can be done in writing, by phone, or in person. Another amendment, known as an “after final amendment,” can also be filed. If the examiner is not convinced, an “advisory action” will be sent reiterating the examiner’s position. The applicant still has the opportunity to exercise the other choices in this section.

Filing a Continuation, Continuation-in-Part, or a Request for Continued Examination

An applicant can have claims reviewed further by the examiner by filing a continuation application or a request for continued examination (RCE).

A new application, known as a “continuation,” can be filed while the original (or “parent”) application is still pending. A continuation application consists of the same invention, cross-referenced to the parent application and with a new set of claims. The continuation application allows a second or third bite at the apple, since it is theoretically possible to file an unlimited sequence of continuation applications. The filing date of the parent application is retained for purposes of determining the relevancy of prior art.

EXAMPLE: Susan filed a patent application for her paint roller invention in January 2010. She filed a continuation application for the paint roller in July 2012. Bob invented the same paint roller device in January 2011. Susan has priority because her parent application was filed before Bob invented his paint roller.

If a request for continued examination is filed, the inventor does not have to file a new copy of the specification or drawing and will not receive a new serial number or filing date. The inventor files an RCE form, pays another filing fee, and submits another amendment.

A less common form of extension application is known as a continuation-in-part (CIP), in which a portion or all of the earlier application is continued and new matter not disclosed in the earlier application is included. CIP applications are used when an applicant wants to present an improvement but is prevented from adding it to a pending application because of the prohibition against adding “new matter.”

EXAMPLE: Luther invents a bicycle gear with a new shape. After Luther files the patent application, his research shows that the gear works much more quietly if it’s made of a certain alloy. Luther wants to add a few dependent claims specifically to cover a gear made of the alloy. The solution: file a CIP describing the alloy in the specification and add a few dependent claims that recite that the gear is made of the alloy. To avoid any possibility of double patenting, Luther abandons the parent application or files a terminal disclaimer, a statement that both patents will terminate on the date when the first patent ends.

When a CIP is filed, the parent application is usually allowed to go abandoned because if the claims in the CIP and parent application are similar, one or both of the resulting patents can be held invalid under a principle known as double patenting. If the claims are different, both applications can proceed.

For further information on continuations, review MPEP Sec. 201.07. If a continuation application is filed, the resulting patent will expire 20 years after the filing date of the original, or parent, application.

Appealing the Examiner's Determination

An applicant who believes that the examiner’s final office action is wrong can appeal to the Patent Trial and Appeal Board (PTAB), a tribunal of PTO judges. In addition to filing written arguments, you can request an oral hearing, during which oral statements can be provided for 20 minutes.

For further information on complying with the appeal procedure, see PTO Rules of Practice 191 to 198.

After you've filed you appeal brief, the examiner will reexamine the application and file a response, usually maintaining the rejection (the “Examiner’s Answer”). You can file a response to the Examiner’s Answer.

The PTAB either agrees with the applicant and instructs the examiner to allow the application, or rejects the appeal (which happens in two thirds of appeals) and the final office action stands.

You can file a further appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC) within 60 days of the decision.

If the CAFC upholds the PTO’s decision, you can request the U.S. Supreme Court hear the case, although the Supreme Court rarely hears patent appeals. If a patent is finally issued as a result of an appeal, the PTO will extend the patent term up to five years based on the delay, pursuant to 35 U.S.C. Sec. 154.

Petitions to the Commissioner for Non-Substantive Matters

In cases where unfair or illegal treatment is alleged, the Commissioner of Patents and Trademarks has the power to overrule almost anyone in the PTO except the PTAB. For example, if someone in the PTO’s application branch decides that an application is not entitled to a certain filing date, the applicant can petition the Commissioner to overrule this decision.

If the final office action is premised on unfair or illegal treatment, a petition that includes a verified statement signed by the applicant must be filed promptly. Verified statements are either notarized or contain a declaration attesting to the truthfulness of the statement.

Abandonment of Action

If the applicant files no response to the final office action within the required three-month period, the PTO will mail a Notice of Abandonment and the application process will be officially over. Some applicants decide to abandon an application, but also want to prevent anyone else from getting a valid patent on the same invention.

This can be accomplished by converting the application to a Statutory Invention Registration (SIR). The SIR precludes another applicant from obtaining a patent on the invention with the exception of someone who filed before the primary applicant.

For more information on patents, check out Nolo's Patents for Beginners.

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