What is an after-final response?
An after-final response refers to a reply to a Final Office Action that is filed without a Request for Continued Examination (RCE). After-final responses should be used judiciously depending upon the specific circumstances of a particular patent application. It’s a judgment call that depends on whether the examiner will be open to reviewing such a response.
An after-final response is an alternative to the RCE. It can work when you have a willing examiner and the timing is sufficiently early.
When is an after-final response appropriate?
Allowable subject matter
An after-final response would be appropriate to take allowable claims and/or amend certain claims to make them allowable. Such a reply would place the application in a condition for allowance assuming rejected claims are canceled or amended to include allowable subject matter.
Entry of any other claim amendments, such as those that result in broader claim scope than the allowable claims, is not a matter of right [see MPEP 714.13].
After Examiner Interview
An Examiner Interview gives the applicant an opportunity to understand where the examiner is coming from and how receptive the examiner may be to further claim amendments and arguments. Examiners are more willing to consider after-final responses if they feel that the claim amendments proposed during the interviews would not warrant additional searches of the prior art.
Limited amount of further search or consideration
Depending upon the examiner, after-final responses may be entered if the amount of any further searching of the prior art is limited.
What are the risks of filing a Final Office Action response without an RCE?
If the examiner decides not to enter or consider an after-final response, the examiner will issue an Advisory Action. Where claim amendments are involved, the applicant will most likely need to file an RCE to get the claim amendments entered. Significant USPTO extension fees may be required depending upon the timing of the RCE.
Therefore, it’s best to file an after-final response early (i.e., within 2 months of the Final Office Action date). This gives you the option of filing an RCE in response to an Advisory Action while avoiding or minimizing USPTO extension fees.
If you’re already in an extended period (i.e., beyond three months from the Final Office Action date), it may be preferable to file the response with an RCE and avoid paying greater extension fees should your after-final response get rejected.
What are the benefits of after-final responses?
The ideal scenario would involve the patent examiner entering an after-final response and allowing the application as a result. This saves the applicant from having to pay USPTO fees for an RCE (large/small: $1,300/$650 for 1st RCE, $1,900/$950 for 2nd and subsequent RCE).
Reducing probability of further Office Actions
Short of that ideal situation, it may still be helpful to file an after-final response even if it does not directly result in allowance. For example, a more helpful examiner may reveal certain reasons as to why your Final Office Action response did not place the application in condition for allowance.
An applicant can then supplement or modify the claim amendments to be filed with the RCE in order to bolster the probability of success and avoid subsequent Office Actions.
When is the recommended time to file an after-final response?
We recommend filing the after-final response by the 2-month early deadline which applies uniquely to Final Office Actions. Here is why the early two-month deadline matters if you’re responding without an RCE [see MPEP 706.07]:
- The examiner may not enter your proposed amendments or agree with your arguments. If the examiner feels your after-final response raises new issues (i.e., requires a lot more work), then the examiner will issue an Advisory Action; and
- If an Advisory Action is forthcoming, the date of the Advisory Action in relation to the extension-free deadline (3 months from the FOA date) will matter for purposes of extension requests and fees.
If the Advisory Action is issued before the 3-month extension-free deadline, then you have time to file an RCE without paying for an extension.
If the Advisory Action is issued after the 3-month extension-free deadline, then the Advisory Action date will be considered your new shortened statutory period. That means you can file an RCE on the same day of the Advisory Action date without an extension (if you act fast). If you can’t act that quickly, extensions of time will be calculated from the date of the Advisory Action. In any event, the maximum amount of time to respond to the Advisory Action cannot extend past 6 months from the FOA date.