If you need a refresher on what an Office action is and statistics associated with Office actions in the U.S., take a look at this link.
In the U.S., after a patent application is filed, it sits in a queue to be examined by a patent examiner. The patent examiner will review the pending patent claims and determine whether they are allowable for a number of reasons. The examiner will examine the claims to determine patentability with respect to patentable subject matter, novelty, and non-obviousness, among other reasons. The patent examiner will explain the issues in an Office action that is written correspondence sent to the applicant.
At this point, the applicant has up to six months to respond to the Office action. The applicant can amend the claims in response to the Office action and its rejections and also can provide remarks that explain why the applicant believes that the claims are allowable and eligible for a patent.
However, it is a bit more complicated than that. There are two different “main” types of Office actions including non-final Office actions and “final” Office actions. After sitting in the queue and being examined, the first Office action from the examiner (except in very rare circumstances) is a non-final Office action. After the applicant responds to the non-final Office action, the examiner will determine whether to allow the application, issue another non-final Office action, or issue a “final” Office action. As an example, if an applicant amends the claims in a patent application in an attempt to overcome rejections in the non-final Office action, the examiner may review the application with the amended claims and determine that the claims are still not allowable. The examiner may disagree with the applicant and may issue a “final” Office action. At this point, the “final” Office action is again sent to the applicant.
Although the Office action is known as a “final” Office action, it is not final final. The applicant can take a number of different approaches to responding to the “final” Office action.
As an optional first step, the applicant can submit another response and request for reconsideration for review by the examiner. Typically, an applicant cannot make substantive amendments to the claims. The examiner may review the response and disagree. At this point, the examiner may send what is known as an Advisory action to the applicant indicating that the response still does not overcome the rejections.
As another approach, the applicant can appeal the rejections. Sometimes, it may be a good idea to appeal the rejections when the applicant believes that their position is strong. The applicant may appeal after receiving the Advisory action. When an appeal is filed, the application can be sent to the Patent Trial and Appeal Board (PTAB) for review. The appeal process can be long and complicated. However, the number of pending appeals before the PTAB has gradually decreased in recent years. Although it depends on the technology area, there is currently an average wait of around 12 months to receive a decision from the PTAB.
As another approach, the applicant can file a Request for Continued Examination (RCE). An RCE requires additional USPTO fees. An RCE can be filed after the optional first step of filing the response and receiving an Advisory action. Alternatively, the applicant can file a response along with an RCE. The response can include substantive amendments to the claims. By filing an RCE, the applicant typically gets another two bites at the apple. In other words, after filing the RCE, the application will again go back to the examiner and sit in a queue for examination almost as if it is a brand new application. The examiner will review the application and determine whether to allow the application or issue another Office action. Typically, this Office action is a non-final Office action. It may be third Office action in the application. So the process repeats again…
At this point, the applicant has up to six months to respond to the Office action. The applicant can amend the claims in response to the Office action and its rejections and also can provide remarks that explain why the applicant believes that the claims are allowable and eligible for a patent.
If you have questions about final Office actions or non-final Office action, rejections, appeals, or the patent process, please reach out to John Bednarz.
