PTO Seeks to Expand After Final Practice

After an applicant files a patent application, he receives an Office Action from the patent examiner.  The applicant generally responds to any rejections by filing an Amendment with claim amendments and arguments.  He may also cancel claims or add new claims to the application, provided that the new claims are supported by the original disclosure in the application and do not add “new matter.”

The examiner will then review the Amendment and issue a Notice of Allowance or a Final Office Action.  A Final Office Action would include the examiner’s response to the claim amendments and arguments.  It would indicate which rejections are still applicable and which have been overcome.

After a Final Office Action, an applicants options are more limited.  He can always file a Notice of Appeal, file a continuing application, or file a Request for Continued Examination (RCE).  The first option is very expensive and time-consuming given the backlog at the Board of Appeals, while the latter options abandon the application (in the PTO’s view) in favor of the continued prosecution.  It can mean that the application is sent back into the examination queue meaning that it could be a year or more before the examiner considers the case again.

There are limited prosecution options available to an applicant after a Final Office Action.  He could cancel any rejected claims and permit allowed claims to issue.  He can usually amend an independent claim to add limitations from allowable dependent claims.  Examiners, however, have broad latitude to refuse to consider most amendments made after a Final Office Action on the grounds that the amendment “raises new issues” or “requires additional search.”  As in all aspects of patent prosecution, some examiners are reasonable about this and others are not.

Thus, applicants are sometimes forced into filing RCEs, which creates the current problem of a huge RCE backlog.

Examiners are not all to blame for these problems.  The system provides them with incentives to not consider amendments made after a Final Office Action.  Examiners get credit for initially examining an application, for issuing a Final Office Action, and for a Notice of Allowance or an abandonment by the applicant.  As noted above, a continuation or RCE filing are considered abandonments by the PTO.  Thus, requiring applicants to file RCEs gives the examiner more credit toward examination goals.

Further, patent applications and claims are sometimes not ready or in good shape at the time of the initial Office Action.  This means that only after filing an Amendment are the claims placed in good shape by the applicant.  In that case, the first Office Action is not helpful to advancing the case and can cause the delay in prosecution.  Sometimes applicants are a bit intransigent until after receiving a Final Office Action.  Applicants are sometimes to blame for delays in prosecution.

The PTO is now proposing an After Final Consideration Pilot program during the third quarter of FY2012 (April-June).  After a Final Office Action, the PTO will give examiners up to 3 hours of non-production time to consider issues and perform searches for utility and plant applications and up to 1 hour for design applications.  Examiners are encouraged to use their professional judgment to determine whether the nature and extent of amendments and arguments can be fully considered within this time period.  This should encourage a bit more flexibility and negotiation between examiners and applicants after a Final Office Action. 

The goal is to provide more compact prosecution and to reduce the number of RCE filings.  This seems to be a good way to attempt to solve this issue.

HT:  IP Watchdog.

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3 Responses to “PTO Seeks to Expand After Final Practice”

  1. Les Says:

    While this is the tiniest of steps in the right direction, this program will not succeed. Even Examiners that want to use it will be descouraged from doing so by the short amount of time it allows and the red tape involved is asking for permission to use it.

    What is needed is an acknowledgement by the Office that second actions should almost never be made final.

    MPEP 706.07 asserts that: “Before final rejection is in order a clear issue should be developed between the examiner and applicant.”

    This is almost impossible in a second action final system. It requires that a clear issue be developed upon the filing of a response to a first office action. If I don’t know what the examiner’s reply is to my response, how can there be a clear issue developed?

    The Office needs to dial back on the contratictory, through the looking glass pronouncements and edicts and remember that haste makes waste.

  2. PTO Numbers – June 2012 « INVENTIVE STEP Says:

    [...] allowed initially.  This is another area where the PTO is making slow, steady progress.  The new after final intiative could help this as [...]

  3. PPAC Report on PTO Fee Proposal « INVENTIVE STEP Says:

    [...] praises the PTO for seeking to reduce RCE filings by expanding after final practice and permitting consideration of prior art after payment of the issue fee.  PPAC is also positive [...]

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