Key Takeaways

  • A “final rejection” from the USPTO is not truly final—several post-rejection options exist.
  • Patent rejections commonly fall under 35 U.S.C. §§ 101, 102, 103, and 112.
  • A Request for Continued Examination (RCE) reopens prosecution and gives the examiner a chance to reconsider your claims.
  • An Amendment After Final (AAF) is a cost-effective way to respond quickly to minor objections.
  • The After Final Consideration Pilot (AFCP) allows for additional examiner review time if specific conditions are met.
  • Appeals and Pre-Appeal Briefs can challenge a final rejection before the Patent Trial and Appeal Board.
  • Understanding rejection types—especially under Section 101—can help shape more strategic responses.
  • Legal support from a patent attorney can significantly increase your chances of success.

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.

Common Types of Patent Rejections

Patent rejections are often categorized under specific statutes in the U.S. Code. Understanding these can help you prepare a more effective response. Common rejection types include:

  • 35 U.S.C. § 101 – Subject Matter Eligibility: Claims may be rejected as abstract ideas, natural phenomena, or laws of nature. This is particularly common with software and biotech patents.
  • 35 U.S.C. § 102 – Novelty: A rejection under § 102 means the claimed invention is not new and is already disclosed in prior art.
  • 35 U.S.C. § 103 – Obviousness: Even if a claim is novel, it may be deemed obvious in light of multiple prior art references.
  • 35 U.S.C. § 112 – Specification and Claim Issues: This includes inadequate written descriptions, lack of enablement, or indefinite claim language.

Each rejection requires a tailored response, often involving amendments to claims, clarification in the specification, or legal argumentation.

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.

Advisory Actions

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.

Strategies for Overcoming § 101 Rejections

Section 101 rejections are particularly complex due to evolving case law and USPTO guidance. These rejections often claim that the invention is directed to a judicial exception, such as an abstract idea. To address them:

  1. Focus on Practical Application: Emphasize how the invention improves a technical field or computer functionality.
  2. Use USPTO Guidance: Refer to examples and decisions in the USPTO’s Subject Matter Eligibility guidance (e.g., the 2019 PEG and updates).
  3. Amend with Specificity: Amend claims to include concrete steps that tie the abstract idea to a real-world use.
  4. Avoid Overgeneralization: Broad, functional claim language can trigger 101 issues. Be precise and technical.
  5. Highlight Inventive Concept: If abstract ideas are present, argue that the implementation is inventive and not routine or conventional.

These responses should ideally be supported by a declaration or interview with the examiner to clarify intent and scope.

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.

Pre-Appeal Brief

  • 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.

Examiner Interviews and Their Impact

An examiner interview can provide invaluable insight into the reasoning behind a patent rejection and the examiner’s expectations. These informal discussions often lead to more constructive amendments or may even preempt a written response. Key benefits include:

  • Clarifying ambiguous claim language.
  • Understanding the examiner’s interpretation of prior art.
  • Testing potential amendments before formal submission.
  • Discussing eligibility under Section 101 or obviousness under 103.

Scheduling an interview soon after a final rejection may save time and lead to more favorable outcomes.

Frequently Asked Questions

  1. What is the difference between a final and non-final patent rejection?
    A non-final rejection initiates the prosecution process, while a final rejection typically follows if earlier objections weren’t resolved. However, final rejections can still be challenged through various means.
  2. Can I still get a patent after a final rejection?
    Yes. You can file an RCE, AAF, appeal, or even a continuation application to continue pursuing protection.
  3. What is a Section 101 patent rejection?
    A Section 101 rejection relates to subject matter eligibility. It argues that the claimed invention is an abstract idea, law of nature, or natural phenomenon and therefore not patentable.
  4. Is it better to appeal or file an RCE?
    It depends on the circumstances. An RCE allows continued prosecution with the same examiner, while an appeal elevates the matter to the Patent Trial and Appeal Board for a new review.
  5. Do I need a lawyer to overcome a patent rejection?
    While not legally required, working with a patent attorney significantly improves your chances of success, particularly for complex rejections like those under Section 101 or involving multiple prior art references.

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