A patent Office Action is a document that summarises the examiner’s review of your patent application. A finding of whether your patent claims are acceptable will be included in the Office Action. In the vast majority of circumstances, claim rejections will be included of the first Office Action in a utility patent application. If the examiner believes your claims cover numerous inventions, he or she may issue a Restriction Requirement that divides your claims into groups and requires you to choose one set of claims above the others for inclusion in the pending application. The Restriction Requirement is usually followed by a non-final Office Action.
Final Office Action
If your response to a non-final Office Action does not persuade the examiner, the examiner will issue a Final Office Action. A “Final Office Action” is rarely final because a patent applicant normally has the option of filing a follow-up response, which would result in a new non-final Office Action. Patent examiners, as you might expect, have a large number of applications to review. As a result, each patent application is given a set period of time to be reviewed by examiners. The examiner will not wish to spend any more time evaluating any responses if a response to a non-final Office Action fails to place the application in a condition for allowance. As a result, consider a “Final” Office Action to be less “final” for the application and more “conclusive” for the applicant.
Prior to filing the written response, it may be beneficial to have your patent attorney perform an Examiner Interview. During the interview, the examiner may supply useful information that can influence your claim modifications and related arguments, as well as the type of response you receive (e.g., after-final response vs. RCE).
Non-Final Office Action
Most, if not all, of your pending claims will be rejected in your first non-final Office Action. The examiner will find and apply relevant prior art references to each pending claim, explaining how the examiner feels the claims’ traits (“limitations”) are contained in the cited prior art. Now it’s up to you and your patent lawyer to respond by:
Defending the absence of specific claim limitations/features in the cited prior art or amending claims to incorporate limitations/features not revealed or suggested in the cited prior art.
Clearly, the goal of the Office Action response is to persuade the examiner to accept your claims through a combination of claim changes and deft arguments that eloquently demonstrate how particular claim recitations are missing from the relevant previous art.
Request for Continued Examination
A Request for Continued Examination (RCE) allows the applicant to reset the clock so that the examiner can devote more time to evaluating a subsequent response. If you intend to make future claim revisions that may need the examiner to search for further prior art, an RCE is a good idea. If your response to a Final Office Action followed by an RCE does not result in an allowance, the examiner will most likely issue a non-final Office Action, giving you another chance to respond.
An After-Final Response without an RCE might be suitable if a Final Office Action indicates that an allowance is likely (e.g., certain dependent claims would be permitted if rewritten to include restrictions of base claim and all intervening claims). In such circumstances, the examiner may be willing to enter any post-final claim amendments that put the application in a condition for acceptance, especially if the claim alterations don’t involve any more prior art research.
AFCP (After-Final Consideration Pilot)
If the response includes at least one independent claim change that does not enlarge the scope of the independent claim in any way, an AFCP request may be justified. Any interviews required by the examiner must be willing and available to the applicant. The examiner will give an advising action if the AFCP 2.0 request is denied. The main determinant of whether an examiner will grant an AFCP submission is if the examiner believes that any additional prior art searching can be completed within the time restriction. Many examiners just reject an AFCP request due to the time constraint excuse, therefore a pre-interview with the examiner may be beneficial in determining whether an AFCP request is appropriate.
In addition to that, if it appears that no other claim changes, evidence, or arguments can be brought to support the claims’ allowability, it’s time to assess whether an ex parte patent appeal is worth the effort and money. Sometimes you don’t have a choice but to go above and beyond the examiner.
We facilitate you with comprehensive Official Action Response services so you can focus on other core aspects of your application. With this service we will be sending individual notifications on each action, will be distributing reports listing each action received and filed in a given timeframe, or we can update a file management system or database in lieu of sending formal notifications.
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