A final rejection is not the end

April 02, 2016
Patterson Thuente IP

During prosecution of a US patent application, a second or subsequent Office Action can be made final by the examiner. “Final” is a misnomer, however, because a final rejection does not mean that prosecution of the patent application is over. In fact, there are several procedural options available to a patent applicant after receiving a final rejection.

crumpledideaA first option is to file a Request for Continued Examination (RCE). An RCE reopens prosecution and causes the examiner to take another look at the application based on amendments or arguments in a Preliminary Amendment submitted with the RCE. While an RCE and Preliminary Amendment may be a good strategic option in many circumstances, it can be an expensive one: the US Patent & Trademark Office (USPTO) charges large entities a fee of $1,200 for a first RCE filed in an application and $1,700 for a second or subsequent RCE in that application. These fees are discounted 50% for small entities and 75% for micro entities.

A second option is to file an Amendment After Final (AAF). AAFs do not require any USPTO fees, but examiners are given a limited amount of time to consider them. Therefore, they can be most effective when straightforward arguments or amendments can be presented to overcome rejections or when the remaining issues are relatively simple (e.g., claim amendments as to form in order to resolve rejections under 35 U.S.C. § 112).

A relatively new option in US after-final practice is the After Final Consideration Pilot 2.0 (AFCP) program. An AFCP request can be filed with an AAF and gives an examiner some additional, though still limited, time to consider the AAF. In order to file an AFCP request, the application must be finally rejected, an AAF must be filed, and the AAF must include an amendment to at least one independent claim, with that amendment not broadening the claim in any way. The applicant or its representative must also agree to be available for a telephone interview with the examiner. Though interviews are not always held as part of the AFCP program, they can be very helpful for better understanding the issues and the examiner’s current position in the case.

If an AAF is not successful at resolving the remaining issues, the examiner will issue an Advisory Action. Advisory Actions sometimes include only basic information (e.g., the examiner considers the AAF to raise new issues requiring further search and/or consideration, such that the application is not in condition for allowance), though oftentimes the examiner will include some additional information about their review of the AAF or any prior art they think might apply, whether new or already on the record. Though there are several options available at this point, including abandoning the application with or without filing a new continuation application, it is common to file an RCE and Preliminary Amendment in order to reopen and continue prosecution.

Another option after receiving a final rejection—or following an Advisory Action if an AAF was filed—is to file an appeal. An appeal is initiated by filing a Notice of Appeal and eventually sends the application for review by the USPTO’s Patent Trial & Appeal Board (PTAB). It can be a time-consuming endeavor, with most appealed applications waiting in queue for two years or more before being considered by the PTAB. It is also more expensive than the other options, requiring at least $2,800 in USPTO fees.

An optional step in the appeal process is filing a Pre-Appeal Brief Request for Review with the Notice of Appeal. This pre-appeal process does not require any USPTO fees and is requested by filing a five-page brief of the issues. The brief is then considered by a panel of three examiners, one of whom is the examiner primarily responsible for the application, and the panel can either send the application back to the examiner for further prosecution, allow it to continue in the appeal process, or pass the application to allowance. This third scenario is unusual, with most applications continuing to appeal or being sent back to the examiner.

The time and costs for these and other after-final options can vary widely, and the most appropriate option in any case can depend on a variety of different circumstances. Therefore, if you receive a final rejection, know that the rejection does not mean that the end of prosecution, and discuss the available options with your attorney in order to determine the best strategic option.

For more information on after-final options or the appeals process, contact Amy Salmela at salmela@ptslaw.com or 612.252.1538.