What is a patent Office Action?
After waiting one to two years (or longer) from the filing date of your utility non-provisional patent application, you will eventually receive a letter called an “Office Action” from the patent examiner assigned to your application. As of November 2019, the average wait time for the first patent Office Action is almost 15 months.
What does an Office Action mean?
A patent Office Action is a document written by the patent examiner to summarize the examiner’s review of your patent application. In particular, the Office Action will include a determination of whether your patent claims are allowable. In the vast majority of cases, the first Office Action in a utility patent application will contain claim rejections.
In certain cases where the examiner thinks your claims cover multiple inventions, the examiner may issue a Restriction Requirement segregating claims into groups and requiring you to elect one group of claims over others for consideration in the pending application. A non-final Office Action will typically follow the Restriction Requirement.
What is a Non-Final Office Action?
Your first non-final Office Action will likely include rejections of most, if not all, your pending claims. The examiner will identify and apply the relevant prior art references to each pending claim, detailing how the examiner believes the features (“limitations”) recited in the claims are found in the cited prior art. It is now up to you and your patent attorney to respond by:
- Arguing how certain claim limitations/features are not found in the cited prior art; and/or
- Amending claims to include limitations/features not disclosed or suggested in the cited prior art.
Obviously, the goal of the Office Action response is to convince the examiner to allow your claims through a combination of claim amendments and skillful arguments that poignantly point out how certain claim recitations are absent in the cited prior art.
What is a Final Office Action?
If the examiner is not convinced by your response to a non-final Office Action, the examiner will issue a Final Office Action. A “Final Office Action” is hardly ever final because a patent applicant usually has the option to file a further response that would result in a further non-final Office Action.
As you can imagine, patent examiners have tons of applications to review. Therefore, examiners are allotted a specific amount of time to review each patent application. If a response to a non-final Office Action fails to place the application in a condition for allowance, the examiner will not want to spend any more time reviewing additional responses. So, think of a “Final” Office Action as not really final for the applicant, but more of a counter or clock where the examiner is telling you that your allotted time is up.
It may be advantageous to have your patent attorney conduct an Examiner Interview prior to filing the written response. The examiner may provide valuable insights during the interview which can factor into your claim amendments and associated arguments, as well as the type of reply (e.g., after-final response vs. RCE).
What is a Request for Continued Examination?
A Request for Continued Examination (RCE) is the applicant’s way of resetting the clock so that the examiner can get more time reallocated for reviewing a further response. An RCE makes sense if you’re planning on making further claim amendments that may require the examiner to search for further prior art.
If your response to a Final Office Action accompanied by an RCE does not lead to an allowance, the examiner will likely issue another non-final Office Action which would then provide you with a further opportunity for a response.
If a Final Office Action provides some indication that an allowance may be imminent (e.g., certain dependent claims would be allowable if rewritten to include limitations of base claim and all intervening claims), then an After-Final Response without an RCE would be appropriate. In such cases, the examiner may be happy to enter any after-final claim amendments that place the application in a condition for allowance, especially if those claim amendments will not require further prior art searching.
After-Final Consideration Pilot (AFCP)
An AFCP request might be appropriate if the response includes at least one independent claim amendment that does not broaden the scope of the independent claim in any respect. The applicant must be willing and available to participate in any interviews requested by the examiner. If the AFCP 2.0 request is rejected, the examiner will issue an advisory action. The key factor in whether an examiner would be willing to grant an AFCP submission is whether the examiner feels that any additional prior art searching would be within the allotted time limit. I’ve had many examiners simply reject an AFCP request because of the time limit excuse, so a prior interview with the examiner may be helpful in gauging whether an AFCP request would be favorably received.
If it appears that no further claim amendments, evidence and arguments can be introduced to bolster the allowability of the claims, then it’s time to consider whether an ex parte patent appeal is worth the long and expensive process. Sometimes, you have no other choice but to go above the examiner.