Eight Options for Responding to a Final Office Action. Episode 61

(This episode first aired in 2019. Some options for responding to a Final Office Action may have changed.)

Dealing with a Final Office Action

So far, I’ve covered many aspects of the patenting process, mostly focusing on when things go according to plan. I’ve discussed how to respond to patent rejections and also talked about allowances. But sometimes, even after you respond to a rejection, the patent examiner still doesn’t find your arguments persuasive, and you receive another rejection.

At this stage, your second office action is typically called a final office action—although not always. The term "final" can be misleading because it does not mean you are out of options. There are at least eight different ways to respond, and I’ll go over them briefly in this episode. I will go into greater detail on some of these in later episodes.

When Is an Office Action Truly Final?

Technically, a patent examiner is supposed to give you a chance to respond to a rejection before making it final. If the examiner initially rejects your application on one ground and then changes the rejection to an entirely new ground in the second office action, that second rejection should not be considered final because it introduces new issues.

In rare cases, I’ve successfully argued that a final rejection should not be considered final. However, in at least 95% of cases, the second rejection is final.

This is where the process reminds me of The Princess Bride—when Vizzini keeps saying "Inconceivable!" even though things keep happening, prompting Inigo Montoya to say, "You keep using that word. I do not think it means what you think it means."  That’s how I feel about final office actions. Final does not mean what you think it means.

What it really means is that you cannot respond in the same way you did to a first office action. However, depending on which option you choose, you may still have a pathway that is almost identical to responding to a first rejection.

Eight Options for Responding to a Final Office Action

These options can be grouped into four categories:

1. Abandoning the Application

2. Continuing the Examination Process

3. Filing a New Application

4. Appealing the Rejection

Option 1: Abandonment

One option is simply to abandon the application. This may happen if you are convinced by the examiner’s rejection that your invention is not patentable, or if you no longer have the funds to continue prosecution.

On the final rejection notice, you will be given a response deadline, which is typically three months but can be extended up to six months with additional fees. If you do not respond within this time frame, your application goes abandoned. Technically, you can revive it later, which I will discuss in a separate episode, but for now, if you do nothing, your application will be considered abandoned.

Options 2-5: Continuing Examination with the Same Examiner

These four options involve responding to the same examiner who issued the rejection.

Option 2: Filing a Response Within Two Months

If you file a response within two months of the rejection, the Patent Office gives your response special consideration. This is best if the rejection is minor and you believe a simple response will result in an allowance.

Filing within two months means you do not have to pay extra fees and you will receive an advisory action, which may help clarify the examiner’s position before you take further steps.

Option 3: Filing a Response After Two Months

If you file a response after the two-month window but still within the allowed time frame, you can still argue your case. However, there are disadvantages. If the examiner does not respond quickly or does not issue an allowance, your six-month deadline could pass, causing abandonment even though you filed a response.

Option 4: After Final Consideration Pilot Program (AFCP) 2.0

This is a pilot program that allows you to respond to a final rejection without paying extra fees. The key requirements are:

1. You must respond to the office action.

2. You must narrow your claims.

3. You must agree to an examiner interview if requested.

The downside is that if the examiner believes reviewing your amendments will take more than three hours, they can reject your response.

Option 5: Request for Continued Examination (RCE)

An RCE is essentially paying the Patent Office to keep examining your application. Unlike other options, an RCE allows you to:

• Make new arguments

• Amend claims

• Cancel old claims

• Add new claims

If you file an RCE, the examiner will typically issue either an allowance or another non-final rejection, resetting the prosecution process.

Option 6: Filing a Continuing Application

Instead of responding to the examiner, you can file a continuation, divisional, or continuation-in-part application. This allows you to pursue your invention further, often with new claim strategies.

Options 7-8: Appealing the Rejection

If you believe the examiner is unreasonable or legally incorrect, you can appeal to the Patent Trial and Appeal Board (PTAB).

Option 7: Full Appeal

A full appeal requires filing a Notice of Appeal and eventually submitting an Appeal Brief, explaining why the examiner’s rejection is wrong. Three administrative judges review your case. Currently, it takes about a year to 1.5 years to receive a decision.

If PTAB rules against you, you can still file an RCE, appeal to the Federal Circuit, or file a new application.

Option 8: Pre-Appeal Brief Conference

This option allows you to file a five-page argument to a panel of three examiners (including your examiner’s supervisor). The response time is much faster than a full appeal—typically within 45 days.

Although pre-appeal briefs rarely result in an allowance, they are quick and inexpensive, making them worth considering.

General Strategy

While every case is different, a general strategy is:

1. First, try the After Final Consideration Pilot Program (AFCP) 2.0.

2. Second, if that fails, file an RCE.

3. Third, if you still face rejections, consider an appeal.

If your examiner has a history of being reversed on appeal, you may want to skip the RCE and appeal earlier.

Final Thoughts

That’s a basic overview of your options when you receive a final office action. I will cover specific options in greater detail in later episodes.

I’m Adam Diament, and until next time—keep on inventing!