Having received a final Office Action, there are a few things that you need to do to ensure that your application isn’t lost. One way to do this is to file a complete response to the Office Action and then ask the examiner to reconsider the Office Action.
A final office action is issued by a patent examiner in response to a patent application and signifies the end of the prosecution process unless an appeal is filed. To respond to a final office action, you can take the following steps:
- Review the action thoroughly: Carefully read the office action and understand the reasons for rejection.
- Consult with a patent attorney: If you are unsure about the next steps, it is best to consult with a patent attorney who can help you understand the rejection and guide you through the next steps.
- Determine your options: Depending on the grounds for rejection, you may have different options, such as amending the patent claims, presenting new arguments, or filing an appeal.
- Respond within the deadline: The US Patent and Trademark Office (USPTO) typically provides a 3-month window to respond to a final office action. Make sure to respond within the deadline to avoid abandoning your application.
- Present a strong case: Your response should address the reasons for rejection and provide a compelling argument for why the claims should be allowed. It is important to be persuasive and clear in your response.
- Consider a continuation application: If the response to the final office action does not result in allowance of the claims, you may consider filing a continuation application, which can preserve the original filing date and provide additional time to overcome the rejections.
- Keep records: Make sure to keep a record of all correspondence with the USPTO and any additional documentation that supports your arguments.
Responding to a final office action can be a complex process and it is important to have a solid understanding of the legal and technical aspects of your application. Consulting with a patent attorney can be valuable in navigating this process and increasing the chances of obtaining a patent.
Avoid abandonment of your application
Whether you are a trademark applicant or a patent applicant, you may want to know how to avoid abandonment of your application after a final office action. Failure to respond can lead to abandonment of your application and result in your rights being forfeited. The first step in avoiding abandonment is to obtain an allowance.
You may want to amend your claims or even cancel some of the claims that were rejected. You can also request an interview with the examiner. You can do this in person or by phone. You can then request to have your case continued in prosecution.
If you wish to avoid abandonment of your application after acquiring an allowance, you should respond to the Office action promptly. You may be contacted by the examining attorney, and you may be asked to provide further information about the goods or services that you claim in your application.
Often, an examiner will contact you by phone or e-mail. If you do not respond within a statutory period, you will become abandoned. The USPTO makes it easier for applicants to respond to the Office action by making it possible to file a response within two months of the final Office action mailing date.
If you do not respond, the USPTO will send you a computer-generated notice of abandonment to the correspondence address you provided. Your reply must be fully responsive and filed within a statutory period. You can also file a petition to revive the application. However, you must meet the requirements of a grantable petition under 37 CFR 1.137. If you are unable to meet the requirements of a petition for revival, you may need to pay an extension fee to keep your application alive.
If you are a patent applicant, you may want to file an RCE. The RCE involves purchasing two additional OAs for your patent application. You may be able to do this within a week. You may be able to file this as part of your pre-appeal request. You can also file an RCE if you are frustrated because you did not get a decision in a timely manner.
Deal with issues raised in the Office Action
Getting your patent or trademark examined by a patent attorney is no small feat. There are a myriad formalities to be satisfied, ranging from correcting logo drawings to enforcing disclaimers. As such, it pays to be armed with a list of dos and don’ts. Luckily, most of these are a snap to decipher and will make your life that much easier. In a nutshell, if you want to speed up the process, the best route is to file a formal written response. It is also a good idea to consult with your attorney about any prior art which may have been omitted from the application. This will not only expedite the prosecution, but will also make your client feel better about the process. Lastly, if you are in the market for a new patent or trademark, it’s a great idea to start planning your next move well in advance of the filing deadline.
File a “complete” response to the Office Action
During the patent application process, an Office Action is prepared by the examiner. The Office Action is important as it determines whether the applicant’s application will be accepted. It also provides information about the content of the patent application.
To respond to an Office Action, the applicant must submit a written response. This response is normally submitted through the Patent Center. There are a few steps to a successful response. The first step is to understand the content of the Office Action. This is where a complete understanding of the requirements will help to minimize any possible misunderstandings. The best way to prepare a response is to thoroughly review the Office Action and any supporting documentation. The information contained in the Office Action will provide a useful guide to the patent application.
The second step is to identify the specific parts of the Office Action that require a response. For example, the specific requirements and legal problems raised in the final office action will need to be addressed in a timely fashion. This may involve amending pending claims to remove subject matter not revealed in prior art references. In some cases, this is accomplished by drafting new claims. These claims can be submitted at the same time as the application is remedied of a defect.
The final step is to prepare a complete response to the Office Action. This will include any arguments supporting the claim amendments. This is the most critical step, as failure to follow through will lead to abandonment of the patent application. It will also limit prosecution to claims added after the failure to respond. If the examiner does not provide a formal notice of abandonment, the examining attorney should advise the applicant of this fact.
A response to an Office Action should be a concise, informative, and well-organized document. The contents of the response will vary depending on the nature of the rejections. The Patent Office has published a sample response for this purpose. It is also advisable to check out the Patent Center for additional guidance on how to prepare a complete response to an Office Action.
Ask the examiner to reconsider the Office Action
Applicants who have been denied patent protection may ask the examiner to reconsider the final office action. This request is not an appeal, however, and will not extend the deadline to file a notice of appeal.
The first step in reviewing the final office action is to examine the substantive issues. These are those that involve arguing the validity of the claims and the patentability of the invention. The examiner’s decision is based on his opinion of the application and the prior art. Therefore, the applicant should review these issues carefully to determine next steps.
If the examiner refuses to reconsider, the applicant can either request an oral hearing or file a Notice of Appeal. An appeal can be effective if there is new evidence presented. Alternatively, the applicant can amend the claims and specifications to try to convince the examiner to change his mind.
During the reexamination process, the examiner may find new prior art that was not considered in the original application. This can result in a reexamination of the entire application. The reexamination will include rejection on prior art not of record. The examiner will also reexamine the appealed application.
The examiner will issue an Advisory Action. The examining attorney will review the arguments submitted in the reconsideration. This may result in the examining attorney refusing to allow a mark on the application. If this happens, the applicant can submit a draft response for the examiner’s consideration. If the examiner still refuses to grant a mark, the applicant can request a second interview.
Another option is to request an informal response. The responder can contact the examiner by phone or fax, explain the error, and request that the examiner take another action.
The examiner will typically allow one interview after an office action has been issued. If an examiner refuses to take another action, the applicant can appeal to the Patent Trial and Appeal Board. This procedure will involve many hours of work. If the examiner rejects the application, it may be necessary to pay extension fees.
Normally, the examiner’s response will be written. This will be filed through the Patent Center.