So you have a final rejection in a patent case?

Note: This web page, which discusses its subject matter in only the most general terms, is not intended to be legal advice. Reading this page does not make you a client of OPLF. If you want legal advice you should consult competent counsel who can take into account the details of your particular situation.

Usually in a patent application the USPTO will provide two office actions, the second of which is termed "final". (There are some circumstances in which a first office action can be "final" and sometimes the USPTO will provide more than two office actions before making an office action "final".) When a "final rejection" happens, the applicant has to figure out what to do next. Failure to act promptly and efficaciously can lead to the patent application being held "abandoned" by the USPTO.

The possible next actions often include the following, each of which will now be discussed in some detail:

• Offer an AFCP (After Final Consideration Pilot) benefit to the Examiner
• File a "child" patent application (for example a continuation or divisional application)
• Abandoning in favor of some already-pending application
• Secure an Allowance
• File an RCE
• File a Notice of Appeal

Offer an AFCP (After Final Consideration Pilot) benefit to the Examiner. USPTO has what is called the AFCP (After Final Consideration Pilot) program. To use AFCP, it is necessary to amend at least one independent claim in a way that does not broaden the claim. The applicant files a form called an AFCP Request. The Examiner then considers the AFCP request and picks either of three ways to proceed.

• A first way for the Examiner to proceed is for the Examiner examine the amended claims, and to allow the claims as amended.
• A second way for the Examiner to proceed is for the Examiner to examine the amended claims, and to offer an interview to the applicant.
• A third way for the Examiner to proceed is for the Examiner to decline to enter the proposed amendment, and to decline to examine the proposed amended claims.

The march toward abandonment proceeds regardless of the filing of the AFCP request.

As will be appreciated the first path (leading to allowance) can be very good news for the applicant, especially given that the other options such as filing of an RCE could cost quite a lot of money.

The second path (leading to an interview) offers the chance that the interview might lead to some progress toward allowance or at least a better understanding of exactly why the Examiner thinks that the claims are supposedly not patentable.

The third path does not really leave the applicant worse off than if the AFCP request had not been filed, other than the fact that some time has gone by and it might be necessary to pay for an extension of time to keep the application alive.

Sidestepping abandonment. Sometimes an applicant will pursue an alternative course of action that preserves the prospect of future patent rights while allowing the abandonment to occur.

Filing a "child" patent application. Most typically an applicant may file a "child" application in the USPTO claiming the benefit of the rejected "parent" application. The child application may variously be termed a continuation, divisional, or continuation-in-part patent application. The applicant then lets the parent application go abandoned, and conducts future patent prosecution in the child application. Importantly the parent and child applications are required to be "copending" meaning that for at least one day the pendency of child application overlapped with the pendency of the parent application. (This may require purchasing one or more months of extensions of time in the parent application.) The cost to file the child application is likely to be roughly comparable to what it cost to file the parent application. Such a filing likely requires paying a filing fee, a search fee, an examination fee, and excess-claims fees.

The child application may contain newly drafted claims that are intended to overcome objections or rejections from the final Office Action. The child application may contain argument that is intended to overcome points of view of the Examiner communicated in the final Office Action.

One potential advantage of this approach (filing a child application) is that the filing can be done in a way that is intentionally defective, for example a filing that is missing a government fee. This allows several extra months during which the applicant can consider what it might do in the way of amended claims or new arguments. The amended claims or new arguments may be presented at the same time that the defect is remedied.

When a new application is filed, it joins a queue for examination. The waiting time for a first OA might be several years, depending on the backlog at the art unit to which the application gets assigned.

When a new application is filed, the USPTO classifies the application based upon the content of the claims. The USPTO then assigns the application to an "art unit" (group of about ten Examiners) based upon the classification. The USPTO then assigns the application to a particular Examiner within the art unit. The typical result is that the application is assigned to the same Examiner who examined the parent application. Of course during the time that the application is in queue awaiting examination, the Examiner might retire from service at the USPTO or might be promoted to a different job within the USPTO.

Abandoning in favor of some already-pending application. Sometimes it will turn out that the application that has been finally rejected is part of a larger "family" of patent applications. Upon review it might turn out that there is some family member that is (a) still pending and (b) has the same, or greater, substantive content as the finally rejected application. In such a case the applicant might make a business decision simply to let the finally rejected application go abandoned, leaving for another day the question whether to pursue coverage of the subject matter that had been claimed in the finally rejected application.

Avoiding abandonment. To avoid abandonment the applicant must, within the time limit set in the office action, somehow secure an allowance of the application, must file an RCE (request for continued examination), or must file a Notice of Appeal. Normally the time limit set is three months. Thus for example if the mailing date of the office action ("OA") is March 31, then the three-month period ends June 30. Usually it is possible to purchase one, two, or three months of extensions by paying extension fees to the USPTO. (The extension fees are detailed in the table.) Thus for example if the mailing date of the OA is March 31, and if three months of extensions are purchased, then the due date for results (securing an allowance or filing a Notice of Appeal) is September 30. Extensions of time are paid in arrears. Thus for example the applicant responding to an OA dated March 31 could file a Notice of Appeal on September 30, including with it on that day the fee for a three-month extension of time, and thereby avoid abandonment. (Said differently, to avoid abandonment it is not required that the extension-of-time fee be paid on June 30.)

Securing Allowance. As mentioned above, a first way to avoid abandonment after a final rejection is to secure an allowance of the application. Sometimes this is a straightforward matter, for example by canceling rejected claims so that other (allowed) claims remain in the application. Sometimes an allowance can be obtained by presenting argument, or by amending claims, or by a combination of the two.

It is important to appreciate that what must be accomplished by the due date is not merely the filing of a paper that might later bring about an allowance, but the allowance itself. Suppose a paper is filed that the applicant is absolutely certain will achieve an allowance, and it is filed on the due date. This will not avert abandonment except in the unlikely event that the Examiner happens to allow the application later the same day.

Interviews. Sometimes an applicant will conduct one or more interviews with the examiner, by telephone or in person. Sometimes this makes a difference and leads to an allowance.

Two-month rule. USPTO has a complicated rule that makes it advantageous for an applicant to file a response (if any) within two months of the final OA.

Filing an RCE. As mentioned above, a second way way to avoid abandonment after a final rejection is to file an RCE. Roughly speaking the point of an RCE is that the applicant is purchasing two more OAs in the same patent application. This postpones the risk of abandonment until another OA (perhaps the fourth OA) is made "final". A second RCE could then be filed, thereby purchasing fifth and sixth OAs.

To fully understand the significance of an RCE, it is necessary to know a little about how the productivity of patent examiners in the USPTO is measured. Each patent application assigned to an examiner represents an opportunity to earn two "counts". The first count is earned when the examiner mails the first OA. The second count is earned when the application is allowed or goes abandoned. When an applicant files an RCE, this gives the examiner an opportunity to earn (approximately) two more counts in the same application. The first OA after the RCE earns a first count, and the abandonment or allowance of the application earns a second count.

It is thus unsurprising that the filing of an RCE is usually very favorably received by an examiner.

The Examiner who carries out the work of the two new office actions (from the RCE) is generally the same Examiner who carried out the work of the previous two office actions (prior to the RCE).

The filing of an RCE is not, of course, a guarantee that an allowance will follow. Presumably if an allowance happens, it is because a persuasive argument was presented after the filing of the RCE, or a claim amendment made allowance possible after the filing of the RCE.

The government-fee cost to file an RCE (see table) is usually less than the government-fee cost of filing the application in the first place (not including any extension-of-time fees that may be needed). Importantly the fiing of an RCE does not require payment of any excess-claims fees.

The RCE itself is a simple two-page standardized form. Although the RCE itself is easy to prepare, with the RCE the applicant is required to file a complete response to the final OA. Saying this in another way, if on a particular day the applicant has not figured out how it wishes to respond to the OA, then that day is not a good day for filing an RCE.

After the filing of the RCE, the examiner mails an OA. Usually this happens two or three months after the date that the RCE was filed.

Filing a Notice of Appeal. As mentioned above, a third way to avoid abandonment is to file a Notice of Appeal by the due date. The Notice of Appeal itself is a simple one-page standardized form. The cost to file a Notice of Appeal is shown in the table (not including any extension-of-time fees that may be needed). The filing of the Notice of Appeal starts a two-month time period running, by the end of which the applicant must file an appeal brief. The due date for filing of the appeal brief may be extended by up to five months upon payment of extension fees. (There is a complicated rule that determines exactly when the appeal brief is due, but for this discussion it may be assumed to be two months.)

After the applicant has filed the appeal brief, what is expected is that the examiner will prepare and file an examiner's answer (an appellee's brief). After the examiner's answer is mailed, the applicant may file a reply brief. When all three briefs have been filed (or when the due date for the reply brief passes with no reply brief being filed) then the appeal is "fully briefed". A fully briefed appeal will then enter a queue for eventual decision by the Board of Patent Appeals.

Preparation and filing of an appeal brief is likely to incur a professional fee of many thousands of dollars. It also requires payment of a government fee as shown in the table. Preparation and filing of a reply brief may also incur a professional fee of some thousands of dollars, depending of course on the number and types of issues raised by the examiner in the examiner's answer.

The date that is two months after the mailing of the examiner's answer is important not only because it is the date by which a reply brief (if any) must be filed, but also because it is the date by which the appellant must request oral argument if the appellant wishes to do so. The request for oral argument is a simple one-page form, but requires payment of a substantial government fee as shown in the table.

How long it takes for an appeal to be decided. As mentioned above, when an appeal is fully briefed, it enters a queue for eventual decision by the Board of Patent Appeals. In the past, it was commonplace for a case to wait as long as five years to be decided. Recent changes to the workload of the Board of Patent Appeals due to the America Invents Act are likely to make the wait even longer than five years.

If a patent application has been made "special", however, then the Board is obligated to decide the appeal quickly. If an applicant finds the need to file an appeal, then, it is clearly to the applicant's advantage if the applicant had previously obtained "special" status for the application. There are many ways to obtain "special" status, for eample by means of a petition on the Patent Prosecution Highway.

Withdrawal from appeal. As mentioned above, after the applicant has filed the appeal brief, what is expected is that the examiner will prepare and file an examiner's answer (an appellee's brief). Sometimes, however, this is not what happens. Sometimes the examiner, having studied the appeal brief, decides that the application is allowable, and mails a notice of allowance so as to avoid having to prepare and file an examiner's answer. In other cases the examiner, having studied the appeal brief, decides that the argument in the appeal brief is persuasive but does not wish to allow the application. In such a case the examiner finds some other reason to reject the application, for example doing more searching and finding more prior art that supposedly renders the application unpatentable. When this happens the examiner "withdraws the application from appeal" and returns it to a status of ordinary pendency for further examination.

Action other than filing an appeal brief. Although the natural and expected next step after filing a Notice of Appeal is the filing of an appeal brief, it is not required that the applicant file an appeal brief. As an example, the applicant might file an RCE within two months of the filing of the Notice of Appeal (or later, if extension fees are paid). As another example, the applicant might file a child patent application within two months of the filing of the Notice of Appeal (or later, if extension fees are paid).

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