What is an Advisory Action (AA)?

What is an Advisory Action?

In response to a Final Office Action, an applicant has the option file an after-final response without a Request for Continued Examination. Such an after-final response, however, is a gamble. Unless allowable subject matter has been indicated, most examiners will not accept the amendments and arguments in reply to a Final Office Action without an RCE. In these situations, the examiner will issue an Advisory Action.

An Advisory Action puts the ball back into the applicant’s court. Moreover, deadlines are triggered from the date of the Final Office Action.

Need help getting a patent approved? Contact Vic at vlin@icaplaw.com or call (949) 223-9623 to request a flat rate cost estimate for filing an effective response to your Advisory Action.

Why do examiners issue Advisory Actions?

If an after-final response does not place your application in condition for allowance, you will receive an Advisory Action. One common reason is that the examiner believes the after-final claim amendments require a further prior art search. Accordingly, the examiner will want an RCE 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 result if the examiner found the arguments unconvincing.

How to respond to an Advisory Action

If you plan to amend the claims, it would make sense to file an RCE with the Office Action response. Filing the RCE with your FOA response will avoid an Advisory Action.

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

When is your response due?

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, 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 an Advisory Action is issued. Let’s use some hypotheticals to see when extensions would be required.

For example, suppose a Final Office Action is dated Feb. 1st. An applicant files after an after-final response by May 1st, i.e., the 3-month extension-free deadline. The after-final response does not place the application in condition for allowance, and so 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.

How do you minimize extension fees in responding to an AA?

If you plan to respond to a Final Office Action without an RCE, do it as early as possible and in advance of the 3-month extension free deadline. Alternatively, include an RCE in your response to the Final Office Action.

In the above example, the applicant would have been better off filing Final Office Action reply with an RCE by the 3-month extension-free deadline of May 1st. Doing so would have avoided extension fees.

There is a tradeoff in filing an FOA after-final response without an RCE. On one hand, you might receive an allowance. On the other hand, you incur the risk of an Advisory Action that may require extension fees.

Need help responding to an Advisory Action?

Contact US patent attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can help determine the right strategy for responding to a Final Office Action.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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