At times after a long and an arduous process, the prosecution of a patent application will eventually come to an end in the form of final rejection. This final rejection may be a big seatback especially for inventors and startups after putting in plenty of resources and finances in the development. At times, the matter disclosed in the patent application is core to their business and may be a potential threat to their business model and existence of the business. However, this is not an end of the road. In this article, we have tried to include ways and options available to continue the prosecution of the patent application even after receiving the final rejection.

After the final rejection, the patent applicant typically has three months to six months’ time from the date of final rejection to send a reply. If the applicant fails to respond within the stipulated time, the patent application is considered as abandoned. Therefore, the below mentioned ways to respond to the final rejection may be filed within three to six months from the date of final rejection.

Amendment

The patent applicant may respond with an amendment. This may be done by canceling the claims or complying with the requirement as highlighted by the patent examiner in response to the office action. The amendment to the patent application is made by canceling the claims or complying with the requirements in the office action. As an exemplary analysis, the amendments representing the merits of the patent application may be admitted by representing a justifying reason for the essentiality of the amendment and why it was not earlier presented. As a response from the USPTO for the amendments, an advisory action will be issued by the USPTO if the response to the final office action fails to overcome the rejections. However, if the amendment presented by the applicant overcomes the rejection, a notice of allowance will be issued by the USPTO.

Appeal to the Patent Trial and Appeal Board

An applicant may appeal against the examiner’s decision in the Patent Trial and Appeal Board. This may be done by filing a notice of appeal. It must be filed within a maximum period of six months from the date of issue of the final rejection unless a shortened period is expressly specified in the office action. Further, the applicant should file the appeal brief within two months from the date of filing the notice of appeal. It is to be noted that failure in filing the appeal brief could result in the dismissal of the appeal.

Interview

At times after issuing the final rejection, the examiner may grant one interview to the applicant in order to place the application in condition for allowance and to resolve issues from the previous appeals. However, the purpose and content of the interview should be presented briefly before the interview preferably in writing from the applicant. Such a request may be granted by the examiner, to facilitate any clarification for appeal from the applicant within nominal consideration.

The interview is intended to restate the arguments of record or to even discuss new limitations with any further reconsideration from the examiner. Interviews are intended to be held after the expiration of the shortened statutory period and prior to the maximum permitted statutory period of 6 months without any extension of the time. In addition, a second or further interview after a final rejection may also be held if the examiner is convinced that it will expedite the issues for appeal or any disposal of the application.

Request for Continued Examination (RCE)

The request for Continued Examination (RCE) may be filed by the applicant for continued prosecution of the application after receiving a final rejection. The Request for an RCE should be filed before the abandonment of the application. The last office action in this case is the final rejection, that is withdrawn upon filing of the RCE. In addition, the RCE may also be accompanied by any new arguments or any amendments.

After Final Consideration Pilot 2.0 (AFCP 2.0)

In March 2012, the United States Patent and Trademark Office (USPTO) launched an internal pilot program, entitled the “After Final Consideration Pilot” (AFCP) program. In a nutshell, AFCP is intended to reduce the number of RCE filings and enhance communication between the applicant and examiner. The AFCP permits additional time for examiners to search and/or consider responses after a final Office Action schedules an interview with the applicants (if 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 an examiner interview can be helpful to advance prosecution.

However, 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 atleast one independent claim. It is also important to note that the AFCP 2.0 may only be used once during prosecution of an application.

Filling of a continuation application

A continuation application is an application for the invention disclosed in a prior-filed co-pending nonprovisional application or an international application designating the United States. The disclosure that is produced in the continuation application must not contain any new subject matter. Further, the continuation application must include at least one inventor named in the prior-filed application, and the continuation application must also claim the benefit of the prior-filed application. However, if rejected claims in the pending patent application are presented without any modifications in the continuation application, then the first office action will be considered as the final rejection.

Abandon the application

If there is no response from the applicant within the stipulated time period or within an extended period from the date of issue of final rejection, this will result in abandonment of the application.

Conclusion

The USPTO’s statistical report shows that a rejection on the first office action is not a significant indicator in terms of the final allowance of a patent. The rate of rejection applicable on the first office action is about 90%, whereas the allowance rate for utility patent applications runs around 50% to 60%. This means that almost half of all patent applications are allowed and issued as a patent after most of them are initially rejected. In summary, this article highlights multiple options available to the applicant even after the final rejections. However, the cost may vary for the applicant. Each option allows the applicant to practically do different things to pursue a patent application to the grant. The inventors, startups and corporates may carefully evaluate their options for responding to the final office action rejection depending upon their requirement and budget. Our patent drafting service allows the creation of future-proof drafts that ensure the broadest coverage. Click here for details on this service.

-Yojit Bhugra and Pankaj Garg (Drafting and Prosecution) and the Editorial Team