Demystifying the Final Office Action: 7 Options for Responding to a USPTO Final Office Action

By Stephen B. Schott

When the US Patent Office named the final office “final,” it made a mistake. In Japan, a final rejection is truly final. It’s the end of the line. But here in the US, our “final” office action is just an action that opens up several options for response.

I put together this chart with an explanation of the 7 options for responding to a final office action. It’s an ugly flowchart but please don’t blame me, blame the USPTO—it’s not the simplest stage in the patent prosecution process. (Click on flowchart to get full size view.)

OPTIONS FOR RESPONDING TO A FINAL OFFICE ACTION

1. File a response under the After Final Consideration Pilot Program (AFCP). The USPTO’s AFCP program encourages examiner-applicant interviews. Under the AFCP program, you file a response and the examiner either:

(a) determines that the response requires more than 3 hours of additional search and issues an advisory action (keeping the response simple avoids this outcome);
(b) issues a notice of allowance; or
(c) schedules an interview to discuss the response.

After the interview, the examiner will either issue a notice of allowance or an advisory action.
The deadline to respond to the final office action continues to run when participating in the AFCP program so it is important that we start this process as soon as possible after receiving a final office action.

The response under the AFCP program must:
(a)   respond to final office action;
(b)   amend at least one independent claim without broadening the scope of the claim in any way; and
(c)   include a request and statement signifying applicant is willing to participate in an examiner interview.
There is no USPTO fee for choosing this option.

2. File a response within two months of the final office action’s mailing date to minimize the impact of extension fees. If you file a response within two months from the date of the final office action’s mailing date, the USPTO will calculate your extension fees differently, and usually examine your response quickly.

When filing a response within the two month deadline, the USPTO calculates extension fees from: (1) the final office action due date if the advisory action is mailed within three months of the final action mailing date and the applicant’s response was filed within two months of the final action, or (2) from the date of the advisory action if the applicant’s response was filed within two months of the final action and the advisory action was mailed more than three months from the final office action mailing date.

The response should have no, or minimal, amendments and include argument or remarks explaining the reasons for patentability.

The deadline set in the final office action continues to run even if the examiner does not respond. This means that you may incur late fees or even abandonment if the examiner does not reply in a timely manner.

If the examiner believes that the response fails to overcome the final office action, the USPTO will issue an advisory action. If the examiner believes that the response overcomes the final office action, the USPTO will issue a notice of allowance.
There is no USPTO fee for filing a response within two months of the final office action mailing date.

3. File a notice of appeal and (a) A pre-appeal brief conference request, or (b) File an appeal brief. A notice of appeal starts the appeals process and requires payment of an official USPTO fee. At any time during the appeals process, you can file a continuation application, divisional application, continuation-in-part application, or a request for continued examination with a response (see number 4, below).

You may elect to file a pre-appeal brief conference request that must not include claim amendments and have no more than 5 pages of argument regarding 35 USC 101, 102, 103, and 112 issues. A three examiner panel, including the examiner who issued the final office action, reviews the request. If the panel agrees with the request, the USPTO issues a notice of allowance or new office action. If the panel disagrees with the request, the application proceeds to the next step in the appeals process.

You may elect to file an appeal brief. If you do, your appeal brief is due within 2 months of filing the notice of appeal. The examiner will issue a brief in response to that, and you will have the option of replying to that brief. You can request an oral hearing before an impartial panel of examiners who will make a determination on the appeal once the briefing is complete.

The USPTO charges a fee for filing a notice of appeal and another fee for requesting an oral hearing.

4. File a response with a request for continuation (RCE). If your response is substantive, the RCE removes the finality of the last office action and the next office action you receive will be nonfinal.

The USPTO charges a fee for filing an RCE and subsequent RCEs incur a higher fee than the first RCE.

5. File a response more than two months after the final office action’s mailing date. You may file a response after the two month deadline discussed in (2).  If the examiner believes that the response fails to overcome the final office action, the USPTO will issue an advisory action. If the examiner believes that the response overcomes the final office action, the USPTO will issue a notice of allowance.

When filing a response under this option, all deadlines for responding and all extension fee deadlines continue to run, even if the examiner does not review your response. Thus, you may incur substantial fees or your case may go abandoned.

We do not recommend this course of action unless you have extremely minor amendments that will place your application in condition for allowance.

The USPTO charges no fee for filing a response after final.

6. File a continuation, divisional, or continuation-in-part application. These are all new applications based on the current application. Continuation and divisional applications have the same disclosure as the current application and share its priority date. A continuation-in-part application adds disclosure to the current application and does not share its priority with respect to the additional disclosure. All three types of applications are new applications and restart the application process for the new applications. The current application’s response date will continue to run until you file a response or the current application goes abandoned. Abandonment of the current application does not abandon the new application.

The USPTO charges its normal filing fees for filing any of these applications.

7. Abandon the application. At any time, you may take no action and allow the application to go abandoned or affirmatively abandon the application.

The USPTO does not charge a fee for abandoning an application.

If you have questions, contact me.

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