How final is a Final Office Action?

Don’t freak out if you’ve received a Final Office Action (FOA) in your patent application. It does not mean the end of the road for your patent. If a Final Office Action has been issued, I recommend that you sit down with your patent attorney or agent and analyze the rejection from two distinct angles:

  1. Substance of the rejections; and
  2. Procedure for responding.

By dividing the FOA into the two distinct buckets of substantive issues vs. procedural steps, you will gain a clearer outlook on next steps.

Analyzing the Substance of the FOA

It may help to start by looking at the substantive issues first:

  • Did the examiner take into account the claim amendments and arguments filed in your last reply?
  • Did the examiner find new prior art or repeat the same prior art rejections?
  • How close is the prior art?
  • How many prior art references did the examiner combine to reject your claims?
  • Would further claim amendments have a good shot at overcoming the currently cited prior art?
  • Is the examiner not understanding your claims and arguments? Would a conversation with the examiner help clear any confusion or misunderstanding?

A detailed analysis of the content of an FOA will help guide next steps. If the outstanding FOA is actually your second Final Office Action (i.e., you’ve received a first non-final OA, a first FOA, a second non-final OA and a second FOA), then an appeal may make more sense than filing another response.

The decision on what to file next will help determine the procedural aspects of that filing.

What to file next: After-Final Response, RCE or Appeal?

Broadly speaking, there are a few categories of responses to a final rejection:

  1. After-Final Response
  2. Request for Continued Examination (RCE) with an Office Action reply (containing amendments and/or arguments)
  3. Appeal
  4. Continuing application

When is an After-Final response appropriate?

After-final responses are usually disfavored by examiners unless the extra work required to address the response is kept to a minimum. For example, if claims are being amended to take allowable subject matter, then such an after-final would be appropriate since it would lead directly to an allowance.

Another appropriate time to file an after-final response is when your patent attorney or agent was able to discover through an interview that the examiner might entertain certain claim amendments without requiring an RCE.

When is an RCE appropriate?

If your proposed amendment would require further consideration and/or a search, which is usually the case with any significant claim amendments, you will most likely need to file the response with an RCE in order to give the examiner an adequate opportunity to consider your response. Often times, the examiner will need to search the prior art further due to your claim amendments.

An RCE may be appropriate if you received an Advisory Action in response to your after-final reply. Typically, an Advisory Action will state reasons why your after-final response was not considered or entered (e.g., your after-final response raised new issues or required further searching of the prior art).

When is an appeal appropriate?

If you’re seriously considering an appeal, you probably already know the answer to this question. Claims generally need to be twice rejected in order to be ripe for an appeal. Otherwise, an appeal would be premature [see 37 CFR 41.31 and MPEP 1204].

When is a continuing application appropriate?

If your original specification does not provide sufficient support for certain elements you wish to claim, it may be advisable to file a continuation-in-part (CIP) to add the new subject matter. Keep in mind, however, that the priority date for the new matter will be the later filing date of the CIP and not the earlier filing date of the parent application.

Why file within 2 months of the Final Office Action date?

While a final action has the same extension-free and extendable deadlines as those of a non-final action, one unique deadline applies only to Final Office Actions: the 2-month date. This early two-month deadline, which precedes the 3-month extension-free deadline (aka “shortened statutory period”), matters if you’re filing an after-final response [see MPEP 706.07].  Here’s why.

When an after-final response is filed, two uncertainties initially exist:

  1. whether the examiner will enter your proposed amendments and consider your arguments. If the examiner believes your after-final response raises new issues (read: requires a lot more work on the examiner’s part), then the examiner will issue an Advisory Action; and
  2. if an Advisory Action is forthcoming, whether the Advisory Action will be dated before or after the extension-free deadline (3 months from the FOA date).

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 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, you will have one month from the date of the Advisory Action to file a 1-month extended response as opposed to the 4-month date from the FOA. In any event, the maximum amount of time to respond to the Advisory Action cannot extend past 6 months from the FOA date.

So, the benefit of filing within 2 months of the FOA date comes into play if there’s a possibility of filing a further response after the after-final reply.

Let’s use the following helpful example.

  • Suppose a Final OA is issued on Jan. 2nd and the applicant files an after-final response within 2 months on Mar. 2nd.
  • Assume the examiner believes the after-final response raises new issues and issues an Advisory Action. If the Advisory Action is dated Mar. 2nd (i.e., before the 3-month deadline from the FOA date), the applicant has time to file an RCE by Apr. 2nd (i.e., 3 months from the FOA) without requesting an extension of time.
  • If the Advisory Action is dated April 20th (i.e., after the 3-month extension-free deadline), then April 20th is now considered the new extension-free deadline. The applicant can file an RCE on April 20th without an extension. If more time is needed, the extended deadlines will be calculated from the Advisory Action date: the new 1-month extended deadline is now May 20th, (instead of May 2nd) and the 2-month extended deadline is now June 20th (instead of June 2nd).
  • The very latest extendable deadline (“drop dead date” aka DDD) with a 3-month extension, however, will still be July 2nd and not July 20th because you cannot go past 6 months from the FOA date.

When should finality of Office Action be withdrawn?

The finality of a second or subsequent Office Action may seem questionable when the examiner introduces a new ground of rejection. The issue is whether the new ground of rejection was necessitated by the applicant’s amendment of the claims or an IDS, according to MPEP § 706.07. If not, an applicant may request withdrawal of the premature final status of the pending Office Action.

A Final Office Action issued directly after an Request for Continued Examination (RCE) was filed may be improper especially if the Examiner indicated that a previous after-final response raised new issues, i.e., in an Advisory Action.

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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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