Patent Final Rejection: Everything You Need to Know
Patent final rejection refers to the rejection of patent and closure of application by the patent examiner.3 min read
Patent final rejection refers to the rejection of patent and closure of application by the patent examiner.
A patent examiner can issue a final rejection on or after a second office action. A patent application is considered as closed and no patent is issued after the final rejection.
The United States Patent and Trademark Office (USPTO) issues a final rejection if the examiner is of the view that there is a clear issue of patentability. For example, if the examiner raises patentability issues on the first action and the subsequent amendments by the applicant fails to address those issues in entirety, the examiner may reject the patent as final on the second action, citing the same reasons as in the earlier office action.
A Final Rejection Is Not the End
A final rejection from the USPTO sounds like the end of your patent application. However, fortunately, you still have opportunities to make the necessary amendments in your patent application. The word “final” in “final rejection” is actually a misnomer since a final rejection does not prevent you from prosecuting your patent application.
In fact, you have several procedural options at your disposal after having issued a final rejection.
Request for Continued Examination (RCE)
- The first option is to submit a request for continued examination.
- Along with the RCE, you must also submit a preliminary amendment.
- An RCE reopens your application and the patent examiner takes another look at it.
- The examiner reviews the application based on the amendments submitted in a preliminary amendment.
- Filing an RCE can be costly.
- For large entities, the USPTO charges a fee of $1,200 and $1,700 respectively for first and subsequent RCEs.
- Small and micro entities get a discount of 50 percent and 75 percent respectively on the RCE fees.
Amendment After Final (AAF)
The second option is to submit an AAF. It does not involve any USPTO fees, but the examiner gets a limited time to review the application.
Thus, filing an AAF can be an effective strategy in cases where you can make straightforward amendments or arguments to overcome earlier rejections. It's especially helpful in rejections involving simple and minor issues like claim amendments to resolve rejections under 35 U.S.C. 112.
After Final Consideration Pilot (AFCP)
An AFCP is a relatively new option. You can file an AFCP, along with an AAF, to give more time to the examiner to consider your AAF. Note that the additional time the examiner gets is still limited.
To be eligible for an AFCP request, you must meet the following conditions:
- You must be issued a final rejection.
- You must have filed an AAF.
- Your AAF must make an amendment to at least one independent claim, without having the effect of broadening the amended claim in any manner.
- You must agree on a telephone interview, if required, with the examiner. Examiners do not always hold these interviews, but if held, they can be helpful in understanding the issues and examiners' point of view.
If an AAF does not resolve the outstanding issues, the patent examiner issues an advisory action.
Examiners may sometimes include only basic information in the advisory action. However, examiners usually include some additional information pertaining to the review or any previous matter.
When an advisory action has been issued, you may consider the following options:
- Abandon the application completely without filing any continuation application.
- Abandon the existing application and file a new one.
- File an RCE and reopen the application.
- File an appeal.
- You can file an appeal against a final rejection or an advisory action following an AAF.
- Before filing an appeal, you must file a notice of appeal.
- An appeal application is reviewed by the Patent Trial and Appeal Board (PTAB) of the USPTO.
- Filing an appeal is a time-consuming process. It may take over two years for the PTAB to consider your application.
- It's also expensive to file an appeal. You must pay USPTO fees of at least $2,800.
- You also have the option of filing a pre-appeal brief request, along with the notice of appeal. For this, you will have to file a five-page brief of the issues.
- Filing a pre-appeal process does not cost any filing fees.
- A panel of three examiners is formed to consider the brief. Out of them, one examiner is the examiner assigned with the task of reviewing your patent application.
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