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Is Final really Final? Alternative Patent Prosecution Routes after a Final Office Action

Posted in Development & Commercialization of Technology, Intellectual Property, Patent Counseling & Strategies, Patent Law, Patent Prosecution, Uncategorized

The prosecution of a patent application before the U.S. Patent and Trademark Office (USPTO) can be a prolonged and costly process. The patent prosecution process can include the issuance of an Office Action by the USPTO and the subsequent filing of an Office Action response by the applicant. While such communications can occur multiple times, the USPTO can close the prosecution of the patent application by the issuance of a Final Office Action[1].

A Final Office Action is usually issued when previous arguments are unpersuasive or a new ground of rejection is required by an applicant’s claim amendments.  The most conventional routes for continuing the prosecution of a patent application after the issuance of a Final Office Action have included: (1) the filing of a request for continued examination (RCE) along with new arguments and/or amendments that address the Final Office Action[2]; or (2) the filing of a Notice of Appeal followed by an Appeal Brief, which initiates appeal proceedings before the Patent Trial and Appeal Board (PTAB)[3].

However, the filing of an RCE may further prolong the prosecution of a patent application without providing substantial guidance to the applicant. Likewise, appeal proceedings can be very prolonged and costly.

Various pilot programs enacted by the USPTO can avoid the time and costs associated with RCE and appeal proceedings. Such pilot programs include: (1) the Post-Prosecution Pilot Program (P3 Program)[4]; (2) the After Final Consideration Pilot 2.0 program (AFCP 2.0)[5]; and (3) the Pre-Appeal Brief Conference Program[6].

As outlined in more detail below, each of the aforementioned programs can be used to provide more direction and guidance to the applicant prior to the filing of an RCE or a Notice of Appeal. Participation in each of these programs could also result in the allowance of the application without the need for any further proceedings.

 The P3 Program: Reconsideration by a Panel of Examiners

The P3 Program, which began in July 2016, allows for an applicant to request the reconsideration of a Final Office Action by a panel of examiners. No claim amendments or fees are required to participate in the P3 Program.

To participate in the P3 Program, the applicant must file a request within two months of the mailing date of the Final Office Action along with an Office Action response that is no more than five pages[7]. Upon the receipt of the request, the Patent Office will contact the applicant to schedule a conference (e.g., a teleconference call)[8]. During the conference, the applicant will make an oral presentation to a panel of examiners[9]. Thereafter, the applicant will be informed of one of three outcomes in writing: (1) the upholding of the Final Office Action; (2) finding of allowable subject matter, which will be followed by a Notice of Allowance; or (3) the withdrawal of rejections and the reopening of patent prosecution, which will be followed by a new Office Action[10].

AFCP 2.0: Reconsideration of Additional Claim Amendments

AFCP 2.0, which precedes the P3 Program, allows for the Examiner to search and/or consider an applicant’s additional claim amendments after a Final Office Action and communicate those findings to the applicant. No fees are required to participate in AFCP 2.0.

To participate in AFCP 2.0, the applicant must file a request along with a response to the Final Office Action that includes a non-broadening amendment to at least one independent claim[11]. Thereafter, the Examiner will consider the applicant’s arguments and claim amendments[12]. The Examiner may also conduct additional searches[13]. The Examiner will then communicate his or her findings to the applicant. For instance, the Examiner may hold a brief interview (e.g., a teleconference call) with the applicant to outline the detailed reasons why the Final Office Action is being upheld[14]. Alternatively, the Examiner may find allowable subject matter and issue a Notice of Allowance[15].

Pre-Appeal Brief Conference Program: A Route to Avoiding Appeal

The Pre-Appeal Brief Conference Program provides an applicant with an opportunity to request a panel of examiners to formally review the legal and factual bases of the rejections in the Final Office Action before the initiation of appeal proceedings[16]. To participate in the Pre-Appeal Brief Conference Program, the applicant must file an Office Action response of no more than five pages along with a Notice of Appeal and the requisite fees[17]. A panel of examiners will then consider the applicant’s response and issue a written decision that will state one of the following: (1) the patent application remains under appeal because there is at least one actual issue for appeal; (2) prosecution on the merits is reopened, which will be followed by an Office Action; or (3) the patent application is allowed, which will be followed by a Notice of Allowance[18].

Choosing the Right Pilot Program

Choosing between the different patent prosecution pilot programs after the issuance of a Final Office Action can depend on numerous factors.  For instance, pursuing a request under AFCP 2.0 may be suitable if the applicant desires the Examiner to consider additional claim amendments and arguments.  Likewise, pursuing a request under the P3 Program may be suitable if the applicant desires a panel of examiners to re-consider the previously presented claim amendments and/or arguments.  Similarly, participation in a Pre-Appeal  Brief Conference Program can provide an applicant with an opportunity to determine whether or not the patent application is in a condition for appeal before pursuing a prolonged and costly appeal proceedings.

[1] See Manual of Patent Examining Procedures (M.P.E.P.) § 2271.

[2] M.P.E.P. § 706.07(H).

[3] M.P.E.P. §§ 1201-1216.

[4] Federal Register Notice, Vol. 81, No. 132, July 11, 2016, pages 44845-44849.

[5] Federal Register Notice, Vol. 78, No. 96, May 17, 2013, pages 29117-29119.

[6] Official Gazette Notice entitled  “New Pre-Appeal Brief Conference Pilot Program”, July 12, 2005.

[7] Federal Register Notice, Vol. 81, No. 132, July 11, 2016,  page 44846.

[8] Federal Register Notice, Vol. 81, No. 132, July 11, 2016,  page 44848.

[9] Id.

[10] Federal Register Notice, Vol. 81, No. 132, July 11, 2016,  page 44849.

[11] Federal Register Notice, Vol. 78, No. 96, May 17, 2013, page 29118.

[12] Federal Register Notice, Vol. 78, No. 96, May 17, 2013, pages 29118-29119.

[13] Federal Register Notice, Vol. 78, No. 96, May 17, 2013, page 29119.

[14] Id.

[15] Id.

[16] Official Gazette Notice entitled  “New Pre-Appeal Brief Conference Pilot Program”, July 12, 2005.

[17] Id.

[18] Id.