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Final Office Action Practice

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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