How many patent Office Actions are possible?
No, there are no limits to how many patent Office Actions (OA) an Examiner can issue. Sadly, multiple Office Actions are quite common in utility patent applications. How far you are willing to go to fight a patent rejection will likely depend on other factors. What is your budget? How close are the prior art references? Are you dealing a Section 101 ineligible subject matter rejection? Has your patent attorney spoken with the Examiner?
Should you appeal? At what point would it make sense to abandon your patent application? These are tough questions. Let’s see if we can adopt a few guiding principles for dealing with multiple patent rejections.
How many patent Office Actions should you expect to get in an allowed patent application?
For allowed patent applications, most examiners issue three Office Actions before granting a utility patent. Therefore, it would be fairly common to respond the following sequence of rejections in a utility patent application:
- Non-final OA – 1st response;
- Final OA – 2nd response with Request for Continued Examination (RCE);
- Second Non-final OA – 3rd response.
How many patent Office Actions would warrant an appeal?
What happens if you should receive a second Final OA which would be the fourth time your patent application is rejected? If there are no further meaningful claim amendments or new arguments to make, you may need to consider an appeal. An ex parte appeal which get others besides your assigned examiner to review your patent application.
Before filing an appeal, however, consider whether your patent attorney has conducted any Examiner Interviews. Sometimes a helpful conversation can clarify gaps in the examiner’s understanding and lead to suggested claim amendments that may overcome the cited prior references found thus far.
Keep in mind that an examiner may reopen prosecution which would withdraw your application from the appeal process. Hopefully, such a move by the examiner will signal a forthcoming allowance. But don’t get your hopes up too early. It is entirely possible for an examiner to issue a further Office Action after reopening prosecution.
Are you dealing with an especially difficult patent examiner?
Some patent examiners take pride in allowing no cases. If you have a particularly difficult examiner, you may need to get the supervisor involved or consider an appeal. Recognize that certain subject matter, such as software and business methods related to computers or the Internet, will typically encounter multiple rejections regardless of the examiner assigned to your application.