Final Office Actions – What Are They And How To Respond?

Despite having a name implying the end, receiving a “final” office action in a US Patent Application does not actually mean your patent journey is over. Dealing with a final office action requires knowing the options for responding which are available to you as well as the pros and cons of each of those options. This article will provide a high level overview of final office actions and how to respond to them.

Receiving a final office action means that your patent application has been rejected at least twice, and the patent examiner is maintaining their reason(s) as to why the application is not allowable. This usually happens when you respond to a prior office action and the examiner is not persuaded by your amendments and/or arguments. Any response to a final office action needs to either (1) make the application allowable or (2) take an action which will keep prosecution going.

Receiving a final office action does not mean that your patent application will never be allowed. Many, if not most, patent applicants receive one or more final office actions for their applications but still get valid and enforceable patents.

What if I receive a FINAL Office Action?

As mentioned above, a response to a final Office Action should either (1) make the application allowable or (2) take another action that keeps the application pending.

Some options to keep the application pending include:

A) File a response taking allowable subject matter

B) File a request for continued examination (RCE) with arguments/amendments showing why the application should be granted

C) Appeal the rejection(s) to the Patent Trial and Appeals Board (PTAB)

D) Make use of a pilot program such as the After Final Consideration Pilot (AFCP) program

E) Use another rule to have your arguments considered before the application goes abandoned

Each option has advantages and disadvantages, and which option is best may depend on factors like the strength of the current rejections, how long the case has been pending, how much progress has been made so far, and budget restrictions.

Taking allowable subject matter may be a good option when the examiner has indicated that some claims are allowable, but is not an option at all unless the examiner has said so. Even when this is an option, you may not want to take allowable subject matter if the claims would be unacceptably narrow afterward.

A RCE requires you to pay a fee and file a response to the final office action. The response can include amendments. Filing a RCE may be appropriate when it seems that the arguments are making progress (i.e., you have not hit a dead end arguing with this examiner) and/or when further clarifying amendments would likely help move the process forward.

Appeal requires paying fees and filing a notice of appeal followed up by an appeal brief. The appeals process is much more expensive and time consuming than simply filing a RCE, so it is more likely to be appropriate when prosecution hits a dead end or if your goal is to obtain the broadest protection possible despite costs.

Pilot programs such as AFCP provide a different way of responding which may or not require a fee, but typically are only useful in special circumstances. For example, although AFCP requests can be filed without a fee after any final office action, AFCP requests require an amendment that narrows the claims and typically only result in meaningful progress if the amendment is a minor clarification rather than a substantive change to the scope of the claim.

Other rules for allowing responses include the two-month rule, which allows an applicant to respond to a final office action within 2 months and wait for an examiner’s response. Although this option can avoid paying RCE fees when the arguments are persuasive to the examiner, unpersuasive arguments will still require taking another action to keep prosecution pending. Moreover, if the examiner does not get back until after the 6 month deadline (i.e., 6 months from when the office action was dated), you would need to file a response on the same day that you receive the office action or the application would go abandoned. This can result in rushing the response.

How can a patent professional help me respond to an Office Action?

When responding to an Office Action, it is important to have a strategy in mind. For example, do you want a patent allowed as quickly as possible, do you want the broadest claims possible, or somewhere in between?

At M&B IP, many of our clients wish to take the “in between” approach. Some of these clients may be startup companies who need patent protection on their core products but have a limited budget for patents. Even large companies with bigger budgets may wish to reduce patent expenses and take this approach in order to reduce wasteful spending.

To help minimize expenses during patent prosecution, we take a compact approach that has helped us to reduce the average number of Office Actions on applications we file and prosecute. This approach involves:

1) Having a true understanding of the invention. There is no substitute to having a full and complete understanding of the invention when responding to Office Actions. This helps in identifying where it is okay to compromise by narrowing the claims and where we cannot afford to compromise.

2) Having deep insight into the process on the “other end.” Having a thorough understanding of how Examiners are trained and how Examiners work provides valuable information that can help strike the right balance between broad claims and efficient allowance.

3) Drafting the application with prosecution in mind. We find that patent applications which can be allowed most efficiently are written clearly and directly, emphasizing the core of the innovation in plain terms. When the Examiner can clearly see the core of the innovation, they can better evaluate where the claims stand as compared to prior inventions and are more likely to allow a patent with fewer Office Actions.

Together, these factors allow patent professionals to work with patent Examiners efficiently and without making unnecessarily narrowing changes to the scope of the patent. If you want to learn more about the subject, please read our past article here: “Getting the most out of AFCP at the USPTO”.