The second time your patent application is rejected, the USPTO will refer to it as a “Final” Office action.
The first thing to know is that it’s not actually final. As laid out in another one of our articles, this is simply how the Patent Office refers to a second rejection, because it finishes the “round” of examination you already paid for. In other words, a round of examination involves everything up to two substantive rejections.
To submit a response and continue to the next round, you must normally file a formal Request for Continued Examination (RCE) and pay the associated fee, currently $680-$2000 for most applicants.*
Are there any better options? It turns out there are, if you meet certain criteria.
After Final (AF)
If your response merely corrects a trivial problem or simply follows the Examiner’s recommendations, you can file a standard “After Final” response without any RCE. The USPTO puts it this way: a response after a final rejection will not be considered “unless it merely cancels claims or complies with a formal requirement made earlier.” If the Examiner agrees that it’s a no-brainer, this will usually result in a Notice of Allowance. However, if your response goes beyond that standard, you’ll get an Advisory Action that says your response fails to place the application in condition for allowance.
After Final Consideration Pilot 2.0 (AFCP 2.0)
In many cases, it’s impossible to meet the criteria for a simple After Final response. Thankfully, we have the After Final Consideration Pilot 2.0 (AFCP 2.0) program. If you amend at least one of your independent claims and file an AFCP 2.0 request, then the Examiner is allowed to spend up to three hours (one hour for design applications) to consider your amendment.
Below is a flow chart of how this typically plays out in practice.
As you can see, Option A is the standard response. Consider this route, for example, if you don’t meet any of the criteria mentioned above, or if there’s no time to wait and see how the AF or AFCP 2.0 process works out.
Option B is the After Final response, which can be an option if everything is completely straightforward.
Option C is the AFCP 2.0 route. As you can see, this option generally leads to three possible outcomes.
1. Rejection & A Second Bite at the Apple
In a first scenario, the Examiner may determine that the amended claims should be rejected. This results in an Advisory Action and interview. If you want to continue when this happens, you must submit an RCE and pay the fee. However, the good news is that you can revise your amendments and arguments, taking the Examiner’s position into account. In effect, the AFCP 2.0 response doesn’t count against you, and this scenario gives you two responses for the cost of a single RCE.
2. Allowance Without RCE
In a second scenario, the Examiner may recognize that the amended claims are allowable. This hoped-for scenario results in a Notice of Allowance and avoids the RCE altogether.
3. Denial of Request
Finally, in a third scenario, the Examiner may determine that your amendments and arguments are too extensive to be considered within the allotted time. In this case, the Examiner will send an Advisory Action notifying you of that determination. In response, you would normally resubmit the response with an RCE and the official fee.
So, in two of the three scenarios, there’s a better-than-normal outcome. And in the third scenario, it’s no worse. One thing to keep in mind, however, is that the deadlines for responding to the Office action are not postponed in any of these scenarios. The Examiner will take a few weeks to act. Accordingly, even though there’s no fee to submit the request in the first place, the process can result in a need to pay for an extension of time or even preclude the option altogether.
Hopefully, you now understand how the After Final and AFCP 2.0 options work, and what you might expect. Every situation is different, so be sure to consult with your patent firm about the best course of action in your case.
*Note: this article does not cover the option of a formal Appeal, which is also available after two rejections have occurred.
Blog Post © 2021 Kolitch Romano LLP
If your company’s intellectual property protection isn’t where you want it to be, book a time to talk to one of our IP attorneys. We’d love to learn about your business, explain your strategic options, and work with you to secure your vital IP assets.
Click the link below and get in touch. We look forward to speaking with you!
DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.