Final Office Actions

Posted Tuesday, June 19, 2012.

A few weeks ago, I wrote briefly about Office Actions. When a patent examiner is reviewing an application for patentability, the examiner will communicate findings to an Applicant in an Office Action. 89% of the time, a first Office Action contains a rejection of the patent claims. This is normal, and is an opportunity to refine the precise language of the patent claims. Alternatively, an Applicant can argue with the examiner about the findings.

You can read more about first Office Actions here, but I wanted to discuss Final Office Actions. The scenario is, an Applicant (or the Applicant’s representative before the PTO) files an application, an examiner reviews it and rejects the claims in a first Office Action, the Applicant prepares and files a response to the Office Action, and the examiner reviews the application a second time but is not persuaded by the response. What happens next? The examiner will issue another Office Action, and in many instances it is likely to be a Final Office Action.

Is a “Final Office Action” really final? No, it’s not. There are ways to continue prosecuting the application, which might include:

1) Submit a response with a Request for Continued Examination (RCE). There is a patent office fee for this, but basically with an RCE prosecution is reopened and you keep refining claims or arguing with the examiner for patentability. You get another two rounds of consideration (non-final and final). I know of instances where a case was finally allowed following two RCE’s (in other words, six rounds of prosecution) before allowance. I have read about cases where it has taken even more.

2) Appeal the rejections to the Board of Patent Appeals and Interferences (BPAI). There is also a fee for this, but you’re appealing the examiner’s rejections to a trial court within the PTO. These appeals can succeed, but the outcomes are varied. It may be that the board orders the examiner to grant the patent, but it may also be that the board tells the examiner to continue prosecution, and the examiner can find new grounds of rejection. The other thing to know about appeals is that sometimes it can be years before the appeal is heard, although occasionally just by appealing, the examiner re-opens prosecution independently because they’d rather do that than write an appeal brief for the board.

3) Persuade the examiner to give further consideration under a pilot running at the PTO right now where if they can get to an allowance in 3 hours (without serious further searching), they will. The finally-rejected claims need to be pretty close to an allowance for this.

The main point is that a “Final Office Action” isn’t necessarily the last word on patentability of the application. Ultimately the Applicant is trying to reach consensus with the patent office on the scope of a patent, and like any negotiation it might take more than one round of discussions. The basic filing fee gets an Applicant at least two opportunities (the initial application and a response to the first Office Action) to reach agreement with an examiner. Beyond that, further discussions with the PTO usually require additional fees.

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