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.
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.
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