“Final” Doesn’t Mean It’s Over – Options for Applicants after a Final Office Action

Contrary to the name, a “final” Office Action is not the end of the road for patent prosecution. Several options are available to applicants after receiving a final Office Action, including USPTO initiatives designed to expedite patent prosecution.

Importantly, actions taken for any of the options listed below must be within the six-month statutory period from the final Office Action’s mailing date and are subject to extension of time fees after the three-month date. Note that unlike a non-final OA, filing of a response to a final Office Action does not stop the running of the six-month clock. The application must be allowed, or a Notice of Appeal or Request for Continued Examination (RCE) must be filed, by the end of the statutory period.

Reply After Final Office Action (37 C.F.R. § 1.116)

Under 37 C.F.R. § 1.116, amendments submitted after a final Office Action may be made to place claims in condition for allowance, to present claims in better form for consideration on appeal, or to comply with any requirements expressly set forth by the Examiner in a previous Office Action. If the response fails to overcome the rejections in the final Office Action, the Examiner will issue an Advisory Action. If the response overcomes the rejections, the USPTO will issue a Notice of Allowance.

A reply under 37 C.F.R. § 1.116 is often advisable when only minor claim amendments are required.

Fees and Timing

No fee is required for a submission under 37 C.F.R. § 1.116 within the three-month period of the final Office Action. Extensions of time fees apply thereafter, and only up to the statutory period of six months from the final Office Action date.

If the Reply is filed within two months of the final Office Action date, then any extensions fees are calculated from: (1) the final Office Action due date, if the advisory action is mailed within the three-month period, or (2) the date of the advisory action, if mailed more than three months of the final Office Action. A response may be submitted after filing a notice of appeal.

After Final Consideration Pilot Program (AFCP 2.0)¹

The AFCP 2.0 is a USPTO pilot program that intends to reduce the number of RCE filings and enhance communication between the applicant and Examiner. This program permits additional time for Examiners to search and/or consider responses after a final Office Action and schedule an interview with the applicants if the response was determined not to place the claims in condition for allowance. For the applicants, this may be a cost-effective tool for responding to a final Office Action, as the Examiner interview can be a helpful to advance prosecution.

A request for the AFCP 2.0 should be filed with a response under 37 C.F.R. § 1.116 that includes a non-broadening amendment to at least one independent claim. Also note that the AFCP 2.0 may only be used once during prosecution of an application.

Fees and Timing

No additional fee is required for the AFCP 2.0. The same fees and timing for a response under 37 C.F.R. § 1.116 apply here.

The AFCP 2.0 is currently slated to run through September 30, 2018. Thus, unless the program is extended, all AFCP 2.0 requests must be filed before September 30, 2018.

Reply with Request for Continued Examination (RCE)²

An RCE may be filed when substantive amendments and/or responses to the final Office Action are made. An RCE must be accompanied by a submission (e.g.., a response) – RCEs filed without a submission will result in abandonment of the application at the end of the statutory period. A properly filed RCE re-opens prosecution, and the next Office Action will be non-final.

Fees and Timing

A fee is required for an RCE. Also note that subsequent RCEs cost more than the first RCE filed in an application.

RCEs may be submitted any time during the six-month statutory period after the final Office Action. Submission after the three-month date requires extension of time fees. An RCE stops the six-month clock after the final Office Action. An RCE and response may also be filed after the filing of a Notice of Appeal.

Notice of Appeal³

A Notice of Appeal initiates the appeals process before the PTAB. After the Notice of Appeal, a Pre-Appeal Brief Conference may be requested, or an appeal brief may be filed. The appeal brief is due two months from the date of the Notice of Appeal, with extensions of time available. Alternatively, a Notice of Appeal is sometimes filed to extend the period for reply, since amendments/responses, RCEs, and AFCP 2.0 requests may be filed after filing a Notice of Appeal.

Fees and Timing

A fee is required for a Notice of Appeal.

A Notice of Appeal may be submitted any time during the six-month statutory period after the final Office Action. However, submission after the three-month date requires extension of time fees. The filing of a Notice of Appeal stops the six-month clock after the final Office Action.

Pre-Appeal Brief Conference (PBC) Pilot ⁴

The PBC is a USPTO pilot program that offers applicants a formal review of the rejections in the application prior to filing an appeal brief, to determine whether the application is in condition for appeal. A panel of three Examiners will review the appellant’s remarks and the Examiner’s rejection. The review results in one of the following: (1) application remains under appeal; (2) re-open prosecution, and Office Action or communication will follow; (3) application is allowed; or (4) request is dismissed as failing to comply with requirements.

The PBC request should be accompanied by arguments in a separate paper titled “Pre-Appeal Brief Request for Review,” which may not exceed five pages and is limited to concise arguments that specify clear errors in the rejection. Interpretation of prior art or scope of the claims is not allowed.

For the applicants, the PBC may be a valuable tool that is less costly and has a shorter review period than an appeal. Even if the appeal is maintained, the PBC may be helpful for developing arguments during appeal.

Fees and Timing

No additional fee is required for the PBC. The PBC request should be filed with the Notice of Appeal and before the filing of an appeal brief.

Continuing Application

A continuation, divisional, or continuation-in-part application may be filed after a final Office Action to restart the application process. The new continuing application will be examined, and the parent application may be allowed to lapse.

Fees and Timing

Normal filing fees apply for any continuing application. The continuing application must be filed during pendency of the parent application, i.e., before the expiration of the six-month statutory period. If the continuing application is filed after the three-month date of the final Office Action, extensions of time are required to keep the parent application pending until the child application is filed.

Post-Prosecution Pilot (P3) ⁵ – Currently Closed

The P3 was a USPTO pilot program that ran from July 2016 to January 2017. A P3 request had to be filed within two months of the final Office Action, before filing a Notice of Appeal, and with no more than five pages of concise arguments. The applicant could present oral arguments before a panel of Examiners, and the panel would determine whether to uphold the final rejection, allow the application, or re-open prosecution. In order to qualify for the P3, the applicants could have not previously requested the AFCP 2.0 or PBC programs for the same final Office Action. While the P3 program is currently closed, the USPTO has re-implemented pilot programs in the past after evaluating feedback.

Abandonment

If none of the above actions are taken, the application will become abandoned after expiration of the six-month statutory period.