Patent prosecution refers to the process of interacting with a patent office, such as the United States Patent and Trademark Office (USPTO), to obtain a patent for an invention. This involves a series of steps and communications between the patent applicant (or their attorney) and the patent examiner, aiming to secure approval for the patent application.
Affordable Patent Agency, LLC provides expert guidance throughout every patent prosecution stage to make this process smoother and more cost-effective. Our experience allows you to navigate the complexities of filing, examination and responding to office actions more efficiently. This way, you can ensure your invention receives the protection it deserves without breaking the bank.
Key Aspects of Patent Prosecution:
Filing a Patent Application: The process starts with submitting a detailed patent application, including a description of the invention, claims defining the scope of protection, and any required drawings.
Examination: Once filed, the application is examined to ensure it meets the legal requirements for patentability, including novelty, non-obviousness, and usefulness.
Office Actions: An examiner may issue “office actions” outlining objections or rejections. The applicant must respond by amending claims, providing arguments, or submitting additional information.
- Responses and Amendments: The applicant responds to office actions, which may involve modifying claims or arguing against rejections. This back-and-forth continues until the examiner is satisfied or the final rejection occurs.
Allowance: If the examiner is satisfied, a Notice of Allowance is issued, indicating that the patent will be granted once the required fees are paid.
Issuance: After paying the necessary fees, the USPTO issues the patent, granting the inventor exclusive rights to the invention.
Post-Issuance: Even after issuance, USPTO or third parties can challenge the validity of patents or require maintenance fees to keep them in force.
In summary, patent prosecution is a complex and strategic process that involves crafting and negotiating the scope of patent protection for an invention, with the ultimate goal of securing a patent grant. However, it is vital to distinguish patent prosecution from patent litigation. While prosecution involves obtaining a patent, litigation involves enforcing patent rights in court, typically when there is an infringement dispute.
Final Office Action: A Critical Stage in Patent Prosecution
In the context of patent prosecution, a Final Office Action (often referred to as a “final rejection”) is a critical communication from the United States Patent and Trademark Office (USPTO) that signals a significant stage in the patent application process. After reviewing the applicant’s response to a previous non-final office action, a patent examiner issues this document.
A Final Office Action from the USPTO is pivotal in patent prosecution. It signals that the patent examiner stands firm in their rejection, believing your application doesn’t meet patentability standards. But don’t be misled by the term “final”—this isn’t the end, but a crucial crossroads.
Faced with a Final Office Action, you have powerful options. The applicant has several options, including filing a request for continued examination (RCE), appealing to the Patent Trial and Appeal Board (PTAB), or amending the claims if possible. Each option can extend the prosecution process but may require additional fees or procedural steps.
Each path requires careful consideration and can significantly impact the outcome of your patent application. The right choice could turn a rejection into a patent grant, protecting your innovation and opening doors to new opportunities. In patent prosecution, a Final Office Action is not the final word—it’s the moment to make your next decisive move. Thus, understanding the implications of a final office action is essential for effectively navigating patent prosecution and making strategic decisions to advance the application toward allowance. Thus, a final office rejection is a fork in the road and not the end of the road during the patent prosecution pathway. I will explain all options to you in detail, even though the response after the final office action may appear to be a confusing labyrinth.
It is important to note that your application will be abandoned if you do not follow the steps described below within six months.
Final Office Action is the second or subsequent Examiner’s examination reply where the Examiner has rejected the same claims. After-final responses should be judiciously used and based on the specific circumstances of a particular patent application. You should customize the response to fit the Examiner’s reply, the time after the response, and the patent application. The longer you wait, the USPTO’s fees increase, so time is of the essence here.  Importantly, you have six months to complete one or more of the steps described below before the application is abandoned. There are seven options, as listed below.
Patent Prosecution: Exploring Your Options in Detail
- After Final Consideration Pilot Program (AFCP) 2.0. There are no USPTO fees if filed within three months of the date of FOA. I recommend at least before the end of two months from the FOA date. AFCP has two essential requirements from you.
- You must amend at least one independent claim without broadening the scope of the claim.
- You must agree to an interview with the Examiner.
- Examiners can spend time searching, considering responses, and interviewing to discuss their search results with you. However, the allowed time is less than replies to the first office action or RCE.
- You will benefit from this program’s new search and consideration, even if you don’t get an allowance.
- Response to Request for Reconsideration. You can submit a response to the Final Office Action and request the Examiner to reconsider.
- To be cost-effective, you must file an after-final response within two months of the Final Office Action date. Early filing of this response can reduce or eliminate the USPTO fees of filing RCE in response to an Advisory Action.
- This response is the most appropriate pathway if the subject matter is allowable. The response will take allowable claims and amend/cancel rejected claims to make them allowable. Thus, the response will place the application under a condition of allowance.
- You do not have a right to broader claims for entry into the record.
- The Examiner has a right to either enter or not enter your response into the record. The entry of your response will depend upon the time required to search for the prior art further.
- You will get an Advisory Action from the Examiner if he does not consider your response.
- If you receive an Advisory Action and amend your response, you must file an RCE. The RCE can be expensive, depending on the elapsed time between filing it and the date of the Final Office Action.
- Â Request for Continued Examination (RCE) with submission.
- You must amend one or more independent claims.
- RCE requires a USPTO fee, which increases as the time between the FAO date and the RCE filing date increases.
- You can file an RCE without paying for an extension, provided the Advisory Action is issued before the three-month extension-free deadline.
- If your After-Final response is rejected, filing it with an RCE may be preferable to avoid paying higher extension fees. You should include the RCE if you’re beyond or close to three months from the Final Office Action date.
- Notice of Appeal and Pre-Appeal Brief Conference. You can file a Pre-Appeal Brief Request for Review with the Notice of Appeal.
- Free of USPTO fees.
- You will file a five-page brief of the issues.
- You can not introduce new arguments in brief. Thus, the arguments must be already on record.
- A panel of three examiners will consider the brief. One of the three is the primary Examiner responsible for the application.
- The panel has three options:
- Send the application back to the Examiner for further prosecution.
- Allow it to continue in the appeal process.
- They can allow the application, which is a rare scenario.
- An appeal is filed after receiving either a final rejection or following an Advisory Action.
- To start the appeal, file a Notice of Appeal.
- You will send the application for review by the USPTO’s Patent Trial & Appeal Board (PTAB).
- This process is time-consuming as most appealed applications wait in queue for two years or more before being considered by the PTAB.
- It is also more expensive compared to the other options and requires at least $2,800 in USPTO fees.
- Continuation or Continuation-in-part or Divisional Application.
Continuation applications have the same disclosure as the parent application.
- The scope of the claims must not be identical to that of the parent patent; it can be broader or narrower.
- You can pursue canceled claims from the parent patent or new claims.
- It is best to consider the previous Examiner’s arguments and recite prior art references when drafting claims for a continuation application.
Divisional applications consist of original claims that the Examiner did not consider due to restriction requirements.
- It has the same disclosure and priority date as the parent application.
- The invention improvements can be filed as a Continuation-in-part (CIP) application.
- CIP contained parts of the parent and new disclosures that were not in the parent application.
- Claims based on the new disclosure will have priority of the new disclosure.
- Claims based solely on the parent application disclosure will be entitled to the priority date of the parent application.
- Abandonment
- At any time within six months, you can abandon the application.
- You have six months from the Final Office Action date to complete one or more of the abovementioned processes. Otherwise, the application will automatically be abandoned at the end of six months from the FOA date.
Frequently Asked Questions
What is Patent Prosecution?
Patent prosecution is the process of engaging with a patent office, like the USPTO, to secure a patent for an invention. It starts with filing a patent application detailing the invention and its claims. The application is then examined to ensure it meets novelty and non-obvious criteria. Throughout this process, the patent examiner may issue office actions requiring the applicant to amend claims or provide additional information. Successful navigation of these steps can lead to a Notice of Allowance, where the patent is granted upon fee payment. Effective patent prosecution often involves strategic responses to examiner feedback.
What is Office Action?
An office action is a formal document issued by a patent examiner during the patent prosecution process. It outlines objections, rejections, or requests for additional information regarding a patent application. There are two main types:
- Non-Final Office Action: Provides initial feedback and allows the applicant to amend claims or provide arguments to address the examiner’s concerns.
- Final Office Action: When issues remain unresolved, the examiner stands firm on their objections or rejections and issues a final office action. To move forward, the applicant must take further steps, such as filing a Request for Continued Examination (RCE) or appealing.
Is a Final Office Action the End of Patent Prosecution?
A Final Office Action is not necessarily the end of patent prosecution. It signifies that the patent examiner has maintained their rejection or objections despite previous amendments or arguments. However, it does not mark the conclusion of the process. Applicants have several options, including filing a Request for Continued Examination (RCE), appealing to the Patent Trial and Appeal Board (PTAB), or considering other procedural paths like continuation applications. Each option provides a chance to address the examiner’s concerns and potentially advance the application toward approval.
Affordable Patent Agency: Unlock the Power of Patent Prosecution
Navigating these options requires careful consideration of your application’s specifics and the strategic implications of each choice.
Partnering with an Affordable Patent Agency
An affordable patent agency can provide invaluable assistance in navigating these complexities. With expert guidance on the most suitable options, effective response crafting, and efficient handling of every step in the patent prosecution process, you can ensure that your invention gets the attention it deserves while managing costs effectively. Partnering with a knowledgeable and cost-effective patent agency helps streamline the path to patent approval, transforming challenges into opportunities for securing your innovation.
Affordable Patent Agency, LLC
4131 N. Central Expressway Suite 900, Dallas, TX 75204
(855) 444-1946
