What is an Advisory Action?

An Advisory Action may be issued only in the context of responding to a Final Office Action. It usually comes up when an applicant files an after-final response (i.e., without a Request for Continued Examination).

Why do examiners issue Advisory Actions?

If such an after-final response does not place the application in condition for allowance, the examiner may issue an Advisory Action. Often, the examiner will feel that the after-final claim amendments may require further searching of the prior art. Accordingly, the examiner will want an RCE to be filed in order to have more time allocated for searching the prior art.

If an after-final response consists of only arguments, an Advisory Action may be issued if the arguments did not convince the examiner to allow the application.

How to respond to an Advisory Action

If the applicant desires to further amend the claims, it would make sense to file an RCE with the Office Action response containing the desired claim amendments.

If the applicant has no claim amendments or other evidence to get into the record (e.g., inventor affidavits, customer declarations, etc.), then filing an appeal might make more sense than an RCE.

What is the response deadline?

If an Advisory Action is issued, the deadlines are triggered from the date of the Final Office Action with certain exceptions. Therefore, it is important to keep the Final Office Action date in mind, especially while waiting for a decision on an after-final response.

If an after-final response is being considered, it would be best to file it as soon as possible and preferably in advance of the 3-month extension-free deadline. This minimizes the extension fees that may be required if and when an Advisory Action is issued.

For example, suppose a Final Office Action is dated Feb. 1st and an applicant files after an after-final response by the 3-month extension-free deadline of May 1st. Let’s assume the after-final response did not place the application in condition for allowance and the examiner issues an Advisory Action on June 2nd. At that point, the applicant is already in the 2-month extended period from the date of the Final Office Action. The applicant would have to file an RCE or Notice of Appeal before July 1st and pay a 2-month extension fee.

In the above example, the applicant would have been better off filing an RCE with a Final Office Action reply by the 3-month extension-free deadline of May 1st. Doing so would have avoided extension fees. In those situations, the applicant has to weigh the probability of getting an allowance with an after-final response against the risk of an Advisory Action that may require extension fees.

 

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
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Vic Lin

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