The US patent prosecution process can become a bit confusing once the application reaches the “final” Office Action stage. The “final” nature of the Office Action (OA) means that the Examiner has rejected the claims at least two times. However, it is by no means the end of the process with after-final amendments, appeal and a request for continued examination often being on the cards.

The various options available to the applicant were the subject of a recent webinar that IPcopy attended and what follows is a summary of the webinar (any errors clearly being the work of the author of this post!).

Prosecution in the USPTO follows a very formal process and a final OA issues when an applicant doesn’t deal with the Examiner’s concerns raised in the previous OA. The first thing to check upon receiving a Final Office Action is that the action has been properly issued. If an applicant has amended the claims after the non-final action then the issue of a final office action may be improper if the Examiner has introduced a new ground of rejection that wasn’t precipitated by the applicant’s amendment or information contained in an IDS. According to the webinar many Examiners issue improper Final Office Actions so it is worth checking this point.

Assuming the final Office Action has been issued correctly then there are a number of options available. A request for continued examination may be filed. However, it should be borne in mind that an RCE can in fact be filed at any time after final and before the case is finally closed. It is therefore possible to consider using either the Amendment after Final option (taking advantage of the AFCP 2.0 program) or a request for reconsideration leading to a pre-appeal conference and possibly appeal.

The particular option available depends in part on whether the applicant wants to further amend the claims or whether he wants to argue the case (e.g. because the Examiner has misinterpreted the prior art).

A quick overview of the options is noted below:

After-Final Amendments

The AFCP 2.0 pilot program has been extended to 30 September 2016 with no indication so far that it won’t be extended further. The program helps move prosecution along and can reduce the chances of needing to file an RCE.

To use the program an applicant needs to amend at least one independent claim but such amendment cannot broaden the scope of the claim. The applicant (or its representative) needs to consent to an interview. The request to use the program is free in itself but fees such as extension fees still apply.

The AFCP 2.0 program provides patent examiners with incentives to accept the request namely up to 3 hours of time to consider the arguments/amendments.

There are a number of different outcomes possible. The Examiner may allow some or all of the claims. Alternatively, where the amendment does not satisfy the Examiner may issue an Advisory Action which can help pinpoint the issues that need to be focused on. Also, the amendment may not be entered because the Examiner regards it as taking longer than 3 hours to deal with.

In summary, the pilot program can avoid the need for an RCE, it can also avoid receiving a final rejection upon filing a subsequent RCE and it can help with negotiating with the Examiner.

Appealing the Rejection

Where an applicant feels that it is clear that the Examiner has “got it wrong”, e.g. by misinterpreting either the law or the prior art then it is possible to file a pre-appeal brief request for review. It is noted that this option is not particularly useful where the issues are borderline.

The pre-appeal brief is a focussed document (5 pages only) that forms a roadmap for appeal. Although there is no fee associated with the pre-appeal brief it is necessary to file a Notice of Appeal at the same time ($800).

It was noted that during the exchanges with the Examiner (after filing the pre-appeal brief),  a Reply brief should be filed so as to get the last word and to address the Examiner’s points in the Examiner’s answer.

If the Examiner is not persuaded by the pre-appeal brief then it is possible to continue into appeal or file an RCE. Continuing the appeal to the PTAB requires another $3300 in total fees but it was noted that the RCE option remains on the table even if the appeal is continued in this way so it is always possible to bail out of the appeal process at a late stage and go to an RCE.

The appeal process should be used to identify allowable subject matter and the appeal should be written in such a way as to make it easier for the Examiner to allow rather than reject the claims. It was also suggested in the webinar that separate arguments in respect of dependent claims should be made and claims should not be lumped together within the appeal.

Request for Continued Examination (RCE)

The RCE process continues the examination of an application and should be used after an amendment has not been entered by an Examiner (as this will avoid a final office action being issued straight out of the gate). The first RCE request on a case is cheaper than subsequent ones and an RCE may be filed at pretty much any time after a final rejection has issued.

Mark Richardson 22 December 2015