Timeframe for Final Office Action Response

Posted Saturday, August 18, 2012.

When the USPTO issues an Office Action (read more about Office Actions here), an Applicant must respond to the Office Action within a certain period of time. If the Applicant does not timely respond, the application “goes abandoned” and the USPTO will not give the application further consideration except in extreme circumstances.

For a Non-Final Office Action, the Applicant has three months to file a response without paying the USPTO any further fees. After the third month, the Applicant may still file a response by paying an “extension fee” up to the six month mark. (What constitutes a “month” in USPTO-time can be kind of unusual. Did you know that four months after August 31, 2011 is January 3, 2012? Click here to read more about what constitutes a month and about extension fees.)

For a Final Office Action (FOA), the timeframe for an Applicant’s response and extension fee structure are mostly the same. However, there is one major wrinkle with the timeframe for responding to a FOA that distinguishes it from a response to a Non-Final Office Action, which is embodied in Form Paragraph 7.41 in the USPTO Manual of Patent Examining Procedure (MPEP) section 706.07(b). A portion of that form paragraph reads as follows:

A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.

What in the world does that mean?

To understand that paragraph, it helps to know the options for responding to a Final Office Action. You can read about some of them here. In brief, a “Final Office Action” isn’t really final, in that under 37 CFR 1.136, an Applicant may file a response that puts patent claims in condition for allowance without paying a further fee (if the Examiner agrees the amended claims are in condition for allowance, anyway).

The examiner may not review such a response right away, however, which means the time from when the FOA was issued is still accumulating. That might push the Applicant further into the extension period and require a higher extension fee. Filing the response to the FOA within two months effectively stops the clock, so any extension fee required by a further filing (not the 37 CFR 1.136 filing) may be lower than it would be if the after-final filing came after the two month period.

An example would probably help. Let’s say the Examiner issued an FOA on April 1. The Applicant reviews the rejections and is content with proposing claim amendments that narrow the scope of the claimed invention but overcome the rejections. Believing the amendments put the claims in condition for allowance, the Applicant chooses to submit these as an “Amendment After Final” pursuant to 37 CFR 1.136 and pays no fee at the time of filing the amendment.

Then let’s say the Examiner does not agree that the amendments put the claims in condition for allowance. This news would come in the form of an “Advisory Action,” in which the Examiner explains the reasons the claim amendments won’t be considered. (Say the Examiner issued the Advisory Action on July 15, which is 3.5 months after the FOA was issued.)

What happens next? For the Applicant to continue the prosecution, filing either an RCE or an appeal would move things along. This is where the excerpt of Form Paragraph 706.07(b) from above comes in.

If the Applicant understood that language and wanted to derive the benefit from it, the Applicant would have filed the amendment after final by June 1, which is two months after the FOA was issued. By doing so, that “tolled” the running (stopped the clock) of the applicant’s extension time for a response. When the Advisory Action was mailed on July 15, that means the Applicant can file an RCE or appeal on July 15 without paying any extension fee, or up to August 15 by paying only a one-month extension fee.

Now, however, let’s say the Applicant didn’t submit the amendment after final until July 1, which is three months after the FOA was issued. The time for the extension period continues to run. If we get an Advisory Action on July 15, we are already in the one-month extension period, and if we wait until August 15 to file an RCE or an appeal, we now owe a two-month extension fee. The difference can be hundreds of dollars in extension fees.

The upshot of all of the above is that it is generally best to reply to a Final Office Action within two months, where possible. Doing so leaves the chance of getting an after-final amendment considered without as much damage to the pocketbook for extension fees if the amendment is unsuccessful.

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