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Navigating Final Office Actions in Patent Prosecution: Strategies and Options

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This luncheon event presented by Woodard, Emhardt, Moriarty, McNett & Henry LLP focuses on the nuances of final office actions within patent prosecution. Key topics include the definition and implications of a final rejection under 37 C.F.R. § 1.113-114 and MPEP guidelines. Attendees will learn about various response strategies including filing a response with or without amendments, options for continuing applications, and navigating new PTO rules. This session is crucial for practitioners aiming to effectively address and respond to final actions to enhance their patent prosecution outcomes.

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Navigating Final Office Actions in Patent Prosecution: Strategies and Options

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  1. Final Office Action Practice Kris Lynch Patent Prosecution Luncheon Woodard, Emhardt, Moriarty, McNett & Henry LLP

  2. Final Rejection Defined • 37 C.F.R. § 1.113-114 • MPEP 706.07, 714.12-13 • May be issued on a first action • continuations having claims drawn to same invention as the parent and would have been a proper final rejection if entered in parent • Typically issued in a second or subsequent action Woodard, Emhardt, Moriarty, McNett & Henry LLP

  3. Was the Final Action Proper • Did the examiner introduce a new groundof rejection that is neither necessitated by applicant's amendment of the claims nor based on information submitted in an information disclosure statement filed after final? MPEP § 706.07(a) • If so, request that Examiner withdraw finality of the office action • Example: amendments after final were not entered but receive a final rejection in a first action in a continuation Woodard, Emhardt, Moriarty, McNett & Henry LLP

  4. Options for Responding • File a response w/ or w/out an amendment under 37 C.F.R. § 1.116 • Amendments at discretion of examiner • Possible interview • File a declaration under 37 C.F.R. § 1.132 • File a continuing application or request for continued examination (RCE) • Done to enter an amendment or consider new art • More time to prepare a declaration • Appeal to the Board of Patent Appeals and Interferences under 37 C.F.R. § 1.191 Woodard, Emhardt, Moriarty, McNett & Henry LLP

  5. File a Response • Argue on the merits that the cited references do not apply • Examiner unlikely to withdraw final rejection if same arguments are presented • Likely only useful where remaining rejection(s) is very minor or where it is believed the Examiner has made an oversight Woodard, Emhardt, Moriarty, McNett & Henry LLP

  6. File an Amendment and Response under 37 C.F.R. § 1.116 • To comply with Examiner’s suggestions • To reduce issues on appeal i.e., cancel claims • To present claims in better form for consideration on appeal • If they raise new issues of patentability, the Examiner will likely refuse to enter them Woodard, Emhardt, Moriarty, McNett & Henry LLP

  7. Advisory Action • If reply to final office action within 2 months, the shortened statutory period will expire at 3 months from final office action or from the date the advisory action is mailed from the PTO, whichever is later • Save on extension fees • In no event can the statutory period expire later than 6 months from date of final office action Woodard, Emhardt, Moriarty, McNett & Henry LLP

  8. File a Continuing Application • Continuation, divisional or CIP under 37 C.F.R. § 1.53(b) • Different filing date and serial number • Continued Prosecution Application under 37 C.F.R. § 1.53(d) (Designs only) Woodard, Emhardt, Moriarty, McNett & Henry LLP

  9. File a RCE under37 C.F.R. § 1.114 • Removes finality of most recent office action • Can be done by certificate of mailing • Same filing date and serial number • Requires a “submission” • Typically a response under 37 C.F.R. § 1.111 if an outstanding office action exists • Also requires a fee set forth in 37 C.F.R. § 1.17(e) Woodard, Emhardt, Moriarty, McNett & Henry LLP

  10. Continuation vs. RCE • Continuation if want to keep application pending longer to target infringers or to provoke an interference • or to prepare a declaration • Continuation if some claims are allowed and want an issued patent while pursuing rejected claims in another application • Continuation if claims are going to be independent and distinct from parent 37 C.F.R. § 1.145 Woodard, Emhardt, Moriarty, McNett & Henry LLP

  11. Continuation vs. RCE Continued • RCEs generally have a lower cost • Save on additional claim fees • RCEs have a faster turnaround time • Generally no double patenting issues • Easiest choice if looking to simply have an amendment or piece of prior art considered Woodard, Emhardt, Moriarty, McNett & Henry LLP

  12. New PTO Rules (Rumors) • If received first office action on the merits • 2 Continuations + 1 RCE • If no first office action on the merits • 3 Continuations + 1 RCE • No limit on divisionals • Possible implementation in September-November Woodard, Emhardt, Moriarty, McNett & Henry LLP

  13. Strategies for New Rules • Review applications to determine how many continuations/RCEs have been filed or are likely to be filed in the future • Only option at final may be to appeal Woodard, Emhardt, Moriarty, McNett & Henry LLP

  14. Appeals • Can appeal any claim that has been rejected twice • Doesn’t require a final action • File a Notice of Appeal under 37 C.F.R. § 1.191(a) • Within 3 months extendable to 6 months • Used as a tool to avoid abandonment • File an Appeal Brief under 37 C.F.R. § 192(b) • 2 months from of Notice of Appeal (measured from day of receipt) extendable for another 5 months • Can also file an RCE which effectively removes the appeal request MPEP § 1215.01 Woodard, Emhardt, Moriarty, McNett & Henry LLP

  15. Pre-Appeal Brief Conference Pilot Program • File at same time as Notice of Appeal • 5 or less total pages • Decision within 45 days • Use if rejections are clearly not proper and are without basis • e.g., limitation is not met by a reference or the Examiner failed to show proper motivation for making a modification in an obviousness rejection Woodard, Emhardt, Moriarty, McNett & Henry LLP

  16. Appeals Continued • Board reverses: • Forwarded to Examiner to issue a Notice of Allowance • Board Affirms: • Abandonment • File continuation • Abandon parent • Petition Board for rehearing under 37 C.F.R. § 1.197 • Bring civil action in district court for DC under 35 U.S.C. § 146 • Appeal to Federal Circuit Woodard, Emhardt, Moriarty, McNett & Henry LLP

  17. Final Action Strategies • Some Allowed Claims • Respond to try and overcome the rejected claims • Cancel rejected claims and pursue them in a continuation • May not be best option once new rules are implemented • May end up on appeal Woodard, Emhardt, Moriarty, McNett & Henry LLP

  18. Final Action Strategy Continued • All Claims Remain Rejected • Try to negotiate allowance with the Examiner • RCE or Continuation • Consider filing notice of appeal to delay response • Appeal • To limit prosecution history • If no intention of amending or otherwise limiting claim scope Woodard, Emhardt, Moriarty, McNett & Henry LLP

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