Q: When should an issue of premature final rejection be raised?

According to MPEP 706.07(c) , any question regarding the prematurity of a final rejection "should be raised, if at all, while the application is still pending before the primary examiner." This means that applicants or their representatives should address this issue as soon as they become aware of it, and before the examination process moves beyond the primary examiner stage. To learn more: final rejection patent examination premature rejection primary examiner

Q: When should an applicant raise the issue of a premature final rejection?

According to MPEP 706.07(c) , an applicant should raise the issue of a premature final rejection as soon as possible: Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner. This guidance emphasizes the importance of addressing the issue promptly. Applicants should not wait until after the examination process has concluded to raise concerns about a premature final rejection. By addressing it while the application is still with the primary examiner, the issue can potentially be resolved more efficiently. To learn more: final rejection premature final rejection patent examination MPEP 706.07(c) timing To learn more: MPEP 706.07(c)

Question 1

Who is eligible for the Transitional After-Final Practice?

Accepted Answer

The Transitional After-Final Practice applies to specific patent applications. According to MPEP 706.07(g):

Effective June 8, 1995, in any pending application having an actual or effective filing date of June 8, 1993 or earlier, applicant is entitled, under 37 CFR 1.129(a), to have a first submission after final rejection entered and considered on the merits, if the submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an Appeal Brief under 37 CFR 41.37 and prior to abandonment.

It's important to note that this practice is not available for all applications. The MPEP specifies: The transitional after-final practice is only available to applications filed on or before June 8, 1995 and it is not available for reissue or design applications or reexamination proceedings.

To learn more:

Question 2

When should an issue of premature final rejection be raised?

Accepted Answer

According to MPEP 706.07(c), any question regarding the prematurity of a final rejection "should be raised, if at all, while the application is still pending before the primary examiner." This means that applicants or their representatives should address this issue as soon as they become aware of it, and before the examination process moves beyond the primary examiner stage.

To learn more:

Question 3

When should an applicant raise the issue of a premature final rejection?

Accepted Answer

According to MPEP 706.07(c), an applicant should raise the issue of a premature final rejection as soon as possible:

Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner.

This guidance emphasizes the importance of addressing the issue promptly. Applicants should not wait until after the examination process has concluded to raise concerns about a premature final rejection. By addressing it while the application is still with the primary examiner, the issue can potentially be resolved more efficiently.

To learn more:

MPEP 706.07(c)

Question 4

When can an interview be conducted after a final rejection?

Accepted Answer

Typically, one interview is permitted after a final rejection. The purpose is to place the application in condition for allowance or to resolve issues prior to appeal. As stated in MPEP 713.09:

Normally, one interview after final rejection is permitted in order to place the application in condition for allowance or to resolve issues prior to appeal.

Additionally, interviews can be held after the shortened statutory period expires but before the maximum 6-month period, without requiring an extension of time.

To learn more:

Question 5

When can an examiner's amendment be made without extension fees?

Accepted Answer

An examiner's amendment can be made without the payment of extension fees under certain circumstances, as outlined in MPEP 706.07(f):

"Where a complete first reply to a final Office action has been filed within 2 months of the final Office action, an examiner's amendment to place the application in condition for allowance may be made without the payment of extension fees even if the examiner's amendment is made more than 3 months from the date of the final Office action."

However, it's important to note that "an examiner's amendment may not be made more than 6 months from the date of the final Office action, as the application would be abandoned at that point by operation of law."

Additionally, if the first reply is filed after 2 months, the examiner's amendment must be made within the 3-month shortened statutory period or within an extended period that has been properly petitioned and paid for by the applicant.

To learn more:

Question 6

When can an examiner withdraw the finality of a rejection?

Accepted Answer

An examiner can withdraw the finality of a rejection under the following circumstances:

Upon the applicant's request for reconsideration
If the primary examiner finds the final rejection to have been premature
While the application is still pending

As stated in MPEP 706.07(d): "If, on request by applicant for reconsideration, the primary examiner finds the final rejection to have been premature, he or she should withdraw the finality of the rejection. The finality of the Office action must be withdrawn while the application is still pending."

To learn more:

Question 7

When can a patent examiner make a second or subsequent action final?

Accepted Answer

A patent examiner can make a second or subsequent action final in the following circumstances:

When the examiner introduces a new ground of rejection that is necessitated by the applicant's amendment of the claims.
When the examiner introduces a new ground of rejection based on information submitted in an information disclosure statement (IDS) filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

As stated in MPEP 706.07(a): "Second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant's amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p)."

To learn more:

Question 8

When can a first Office action be made final in a continuing application?

Accepted Answer

A first Office action can be made final in a continuing application when:

The new application is a continuing application of, or a substitute for, an earlier application, and
All claims of the new application are either identical to or patentably indistinct from the claims in the earlier application, and
The claims would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application.

As stated in MPEP 706.07(b): "The claims of a new application may be finally rejected in the first Office action in those situations where (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) all claims of the new application (1) are either identical to or patentably indistinct from the claims in the earlier application [...], and (2) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application."

To learn more:

Question 9

When can a final rejection be withdrawn in a patent application?

Accepted Answer

A final rejection in a patent application can be withdrawn under specific circumstances. According to MPEP 706.07(e):

"Once a final rejection that is not premature has been entered in an application/reexamination proceeding, it should not be withdrawn at the applicant's or patent owner's request except on a showing under 37 CFR 1.116(b)."

However, the examiner may withdraw the rejection of finally rejected claims if:

New facts or reasons convince the examiner that the previously rejected claims are allowable or patentable.
A new ground of rejection needs to be applied, but this should be limited to situations where a new reference fully meets at least one claim or meets it except for obvious differences.

It's important to note that withdrawing a final rejection to apply subsidiary or cumulative references is not recommended.

To learn more:

MPEP 706.07(e)

Question 10

What types of interview requests are likely to be denied after final rejection?

Accepted Answer

Certain types of interview requests are likely to be denied after final rejection. The MPEP 713.09 specifies:

Interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search should be denied.

This means that interviews aimed at rehashing previous arguments or introducing significant new limitations that would require substantial additional examination are unlikely to be granted.

To learn more:

Question 11

What types of amendments are permitted after a final rejection?

Accepted Answer

After a final rejection, certain types of amendments may still be considered. According to MPEP 706.07(e):

"An amendment that will place the application either in condition for allowance or in better form for appeal may be admitted. Also, amendments complying with objections or requirements as to form are to be permitted after final action in accordance with 37 CFR 1.116(a)."

In summary, the following types of amendments are generally permitted after a final rejection:

Amendments that put the application in condition for allowance
Amendments that put the application in better form for appeal
Amendments that comply with objections or formal requirements

It's important to note that these amendments are subject to the examiner's discretion and must comply with the relevant rules and regulations.

To learn more:

MPEP 706.07(e)

Question 12

What situations prevent a first Office action from being made final in a continuing application?

Accepted Answer

There are specific situations where it would not be proper to make a first Office action final in a continuing application. According to MPEP 706.07(b):

"It would not be proper to make final a first Office action in a continuing or substitute application or an RCE where that application contains material which was presented in the earlier application after final rejection or closing of prosecution but was denied entry because (A) new issues were raised that required further consideration and/or search, or (B) the issue of new matter was raised."

Additionally, the MPEP states: "Further, it would not be proper to make final a first Office action in a continuation-in-part application where any claim includes subject matter not present in the earlier application."

These restrictions ensure that applicants have a fair opportunity to address new issues or subject matter before a final rejection is made.

To learn more:

Question 13

What should be done before requesting an interview after final rejection?

Accepted Answer

Before requesting an interview after final rejection, it's important to clearly communicate the purpose and content of the proposed interview. The MPEP 713.09 states:

Prior to the interview, the intended purpose and content of the interview should be presented briefly, preferably in writing.

This preparation helps the examiner determine if the interview is likely to be productive and worth conducting.

To learn more:

Question 14

What is the Transitional After-Final Practice?

Accepted Answer

The Transitional After-Final Practice, as described in MPEP 706.07(g), is a procedure that allows applicants with certain pending applications to have submissions considered after a final rejection. This practice was introduced to ease the transition between 17-year and 20-year patent terms.

Specifically, the MPEP states: In order to facilitate the completion of prosecution of applications pending in the USPTO as of June 8, 1995 and to ease the transition between a 17-year patent term and a 20-year patent term, Public Law 103-465 provided for the further limited reexamination of an application pending for 2 years or longer as of June 8, 1995.

To learn more:

Question 15

What is the time period for reply to a first action final rejection?

Accepted Answer

When a first action final rejection is issued, the applicant is given a specific time period to reply. According to the form paragraphs provided in MPEP 706.07(b), the standard time period is as follows:

"A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action."

This time period allows applicants to respond to the final rejection while also providing flexibility in case an advisory action is mailed late in the process.

To learn more:

Question 16

What is the time period for reply to a final rejection in patent examination?

Accepted Answer

The time period for reply to a final rejection in patent examination is typically three months from the mailing date of the final action, with possible extensions. Specifically:

The shortened statutory period is set to expire THREE MONTHS from the mailing date of the final action.
Extensions of time may be obtained under 37 CFR 1.136(a).
The maximum period for reply is SIX MONTHS from the mailing date of the final action.

As stated in MPEP 706.07(a) using form paragraph 7.40: "A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action."

To learn more:

Question 17

What is the time frame for conducting interviews after final rejection?

Accepted Answer

Interviews after final rejection can be conducted within a specific time frame. According to MPEP 713.09:

Interviews may be held after the expiration of the shortened statutory period and prior to the maximum permitted statutory period of 6 months without an extension of time.

This means that applicants have a window between the end of the shortened statutory period and the 6-month maximum period to conduct interviews without needing to request an extension of time.

To learn more:

Question 18

What is the standard time for reply to a final rejection?

Accepted Answer

The standard time for reply to a final rejection is typically a 3-month shortened statutory period (SSP). However, the MPEP states that "All final rejections setting a 3-month shortened statutory period (SSP) for reply should contain one of form paragraphs 7.39, 7.40, 7.40.01, 7.40.02.fti, 7.40.02.aia, 7.41, 7.41.03, 7.42.03.fti, 7.42.031.fti, or 7.42.09 advising applicant that if the first reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later." This establishes a variable reply period.

It's important to note that "In no event can the statutory period for reply expire later than 6 months from the mailing date of the final rejection."

To learn more:

Question 19

What is the purpose of withdrawing the finality of a rejection?

Accepted Answer

The purpose of withdrawing the finality of a rejection is to address situations where a final rejection may have been premature or inappropriate. This process allows for continued examination and gives the applicant an opportunity to respond to the examiner's rejections without the limitations imposed by a final Office action.

As indicated in MPEP 706.07(d):

"If, on request by applicant for reconsideration, the primary examiner finds the final rejection to have been premature, he or she should withdraw the finality of the rejection."

This provision ensures fairness in the examination process and allows for a more thorough consideration of the application when necessary.

To learn more:

Question 20

What is the purpose of a 'closing prosecution' action in patent examination?

Accepted Answer

A 'closing prosecution' action in patent examination serves to finalize the examination process and prepare the application for potential appeal or abandonment. The MPEP 714.12 mentions:

"The examiner should treat such a reply under 37 CFR 1.116 in the same manner as any amendment after final rejection ... with a view toward closing prosecution."

The purpose of closing prosecution is to:

Ensure all issues have been fully addressed
Provide a clear record of the examination
Set the stage for either appeal or abandonment of the application
Prevent the introduction of new issues that would require reopening prosecution

This action helps maintain efficiency in the patent examination process and provides a definitive endpoint for the current examination phase.

To learn more:

Question 21

What is the procedure for withdrawing a final rejection to apply a new ground of rejection?

Accepted Answer

Withdrawing a final rejection to apply a new ground of rejection is a specific procedure outlined in MPEP 706.07(e). The manual states:

"Although it is permissible to withdraw a final rejection for the purpose of entering a new ground of rejection, this practice is to be limited to situations where a new reference either fully meets at least one claim or meets it except for differences which are shown to be completely obvious."

The procedure involves:

Identifying a new reference that fully meets at least one claim or meets it except for obvious differences
Withdrawing the previous rejection with respect to the claim or claims involved
Applying the new ground of rejection

It's important to note that this practice should not be used for applying subsidiary or cumulative references. Additionally, "New grounds of rejection made in an Office action reopening prosecution after the filing of an appeal brief require the approval of the supervisory patent examiner."

To learn more:

MPEP 706.07(e)

Question 22

What is the impact of amendments after final rejection on appeal rights?

Accepted Answer

Amendments submitted after a final rejection do not automatically remove the application from its appeal-ready or potentially abandoned status. As stated in MPEP 714.12:

The admission of, or refusal to admit, any amendment after a final rejection, a final action, an action closing prosecution, or any related proceedings will not operate to relieve the application or reexamination proceeding from its condition as subject to appeal or to save the application from abandonment under § 1.135.

This means that even if an amendment is submitted, the applicant must still be mindful of appeal deadlines and the potential for abandonment. If an amendment is not entered or does not place the application in condition for allowance, the applicant may need to proceed with an appeal or file a request for continued examination (RCE) to avoid abandonment.

To learn more:

Question 23

What is the difference between the prematurity and tenability of a final rejection?

Accepted Answer

The MPEP 706.07(c) distinguishes between the prematurity and tenability of a final rejection. It states that the question of prematureness "is purely a question of practice, wholly distinct from the tenability of the rejection." This means:

Prematurity refers to whether the final rejection was issued at the appropriate time in the examination process.
Tenability refers to the substantive merits of the rejection itself, i.e., whether the reasons for rejection are valid and well-founded.

While the tenability of a rejection can be challenged through appeal, the prematurity must be addressed through a petition.

To learn more:

Question 24

What is the difference between a prima facie rejection and a final rejection in patent examination?

Accepted Answer

What is the difference between a prima facie rejection and a final rejection in patent examination?

In patent examination, there are two main types of rejections:

Prima facie rejection: This is an initial rejection based on the examiner's first review of the application. The MPEP states, To make a prima facie case of unpatentability, the examiner must provide evidence or reasons why the claimed invention is unpatentable. (MPEP 706)
Final rejection: This occurs after the applicant has had a chance to respond to the prima facie rejection. If the examiner still believes the claims are unpatentable, they may issue a final rejection.

The key difference is that a prima facie rejection allows the applicant to amend claims more freely, while a final rejection limits the applicant's ability to make amendments without reopening prosecution.

To learn more:

Question 25

What is the difference between a first action final rejection and a second or subsequent action final rejection?

russ.krajec@blueironip.com · Accepted Answer

The main difference between a first action final rejection and a second or subsequent action final rejection lies in the circumstances under which they can be made:

First action final rejection: This is relatively rare and can only be made in specific situations, such as when all claims are drawn to the same invention claimed in an earlier application and would have been properly finally rejected in the earlier application.
Second or subsequent action final rejection: This is more common and can be made when the examiner introduces no new ground of rejection that was not necessitated by the applicant's amendment or IDS filing.

As stated in MPEP 706.07(a): "Second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant's amendment of the claims, nor based on information submitted in an information disclosure statement."

To learn more:

Question 26

What is the difference between a first action final rejection and a second action final rejection in patent examination?

Accepted Answer

The MPEP 706.07 distinguishes between first action final rejections and second action final rejections in patent examination:

First Action Final Rejection: This is relatively rare and occurs when all claims are drawn to the same invention claimed in the application's parent case and were subject to a final rejection in that case. The MPEP states:

"The claims of an application for which a request for continued examination (RCE) has been filed may be finally rejected in the action immediately subsequent to the filing of the RCE (with a submission and fee under 37 CFR 1.114) where all the claims in the application after the entry of the submission under 37 CFR 1.114 and any entered supplemental amendments (A) are either identical to or patentably indistinct from the claims in the application prior to the entry of the submission under 37 CFR 1.114, and (B) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to the filing of the RCE under 37 CFR 1.114."

Second Action Final Rejection: This is more common and occurs when the examiner makes a second or any subsequent action on the merits final, provided that the conditions specified in MPEP 706.07(a) are met.

The key difference is that a first action final rejection is based on the relationship between the current application and its parent or a previous RCE filing, while a second action final rejection follows a non-final office action in the same application.

To learn more:

Question 27

What is the difference between a first action final rejection and a regular final rejection?

russ.krajec@blueironip.com · Accepted Answer

What is the difference between a first action final rejection and a regular final rejection?

A first action final rejection occurs when an examiner issues a final rejection in the first Office action of a continuing application, while a regular final rejection typically comes after at least one non-final rejection. The MPEP 706.07(b) states:

'The first action final rejection procedure is not favored, although it may be appropriate in some situations.'

First action final rejections are used when all claims are either identical to or patentably indistinct from claims previously rejected in a parent application. Regular final rejections, on the other hand, are issued after the applicant has had an opportunity to respond to a non-final rejection.

To learn more:

Question 28

What is the deadline for responding to a final rejection in a patent application?

Accepted Answer

The deadline for responding to a final rejection in a patent application is typically three months from the date of the final action. However, the MPEP states:

"A SHORTENED STATUTORY PERIOD FOR REPLY TO THIS FINAL ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION."

It's important to note that this period can be extended, but not beyond six months from the date of the final action. The MPEP further clarifies:

"IN NO EVENT WILL THE STATUTORY PERIOD FOR REPLY EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL ACTION."

Applicants should be aware of these deadlines to avoid abandonment of their application.

To learn more:

Question 29

What is the 'three-month shortened statutory period' in patent examination?

Accepted Answer

The 'three-month shortened statutory period' refers to the time frame given to applicants to respond to a final rejection in patent examination. According to MPEP 706.07, 'The Office action will set a shortened statutory period for reply to a final rejection, which is typically three months.' This period allows applicants to:

File a reply under 37 CFR 1.116
File a request for continued examination (RCE) under 37 CFR 1.114
Appeal the rejection to the Patent Trial and Appeal Board

Applicants can request extensions of time under 37 CFR 1.136(a), but these come with additional fees.

To learn more:

Question 30

What is a premature final rejection in patent examination?

Accepted Answer

A premature final rejection occurs when an examiner makes a rejection final before the applicant has been given a fair opportunity to react to the rejection. According to MPEP 706.07(c):

Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner. This is purely a question of practice, wholly distinct from the tenability of the rejection.

This means that if an applicant believes a final rejection has been made prematurely, they should raise this issue while the application is still being examined by the primary examiner.

To learn more:

MPEP 706.07(c)

Question 31

What happens to the finality of rejection after a submission under the Transitional After-Final Practice?

Accepted Answer

When a submission is made under the Transitional After-Final Practice and the appropriate fee is paid, the finality of the previous rejection is withdrawn. According to MPEP 706.07(g):

The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in 37 CFR 1.17(r).

This means that the application returns to a non-final status, allowing for further examination and potentially additional amendments or arguments from the applicant.

To learn more:

Question 32

What happens if an affidavit or declaration is submitted after a final rejection?

Accepted Answer

If an affidavit or declaration under 37 CFR 1.130 is submitted after a final rejection, it can still be considered timely under certain conditions. According to MPEP 717.01(f):

Affidavits and declarations submitted under 37 CFR 1.130 and other evidence traversing rejections are considered timely if submitted: [...] (C) after final rejection, but before or on the same date of filing an appeal, upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e).

This means that to be considered timely after a final rejection, the applicant must:

Submit the affidavit or declaration before or on the same date of filing an appeal
Provide good and sufficient reasons for the late submission
Explain why the evidence was not presented earlier

Additionally, affidavits or declarations can be submitted after prosecution is closed (including after final rejection) if filed with a request for continued examination (RCE) or continued prosecution application (CPA).

To learn more:

Question 33

What form paragraph should an examiner use when withdrawing the finality of a rejection?

Accepted Answer

When withdrawing the finality of a rejection, an examiner should use Form Paragraph 7.42. The MPEP 706.07(d) provides the specific language for this form paragraph:

"7.42 Withdrawal of Finality of Last Office Action
Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn."

This standardized language ensures clarity and consistency in communication between the examiner and the applicant regarding the status of the examination.

To learn more:

Question 34

What criteria does an examiner use to grant an interview after final rejection?

Accepted Answer

An examiner will grant an interview after final rejection if they believe it can lead to a resolution with minimal additional consideration. According to MPEP 713.09:

Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration.

This means the examiner must see a clear path to either allowing the application or clarifying issues for appeal without extensive additional work.

To learn more:

Question 35

What can be included in a submission under the Transitional After-Final Practice?

Accepted Answer

A submission under the Transitional After-Final Practice can include various types of information and amendments. According to MPEP 706.07(g):

The submission under 37 CFR 1.129(a) may comprise, but is not limited to, an information disclosure statement (IDS), an amendment to the written description, claims or drawings, a new substantive argument and/or new evidence in support of patentability.

However, it's crucial to note that: No amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application 35 U.S.C. 132.

To learn more:

Question 36

What are the requirements for making a second or subsequent action final in patent examination?

Accepted Answer

According to MPEP 706.07, a second or any subsequent action on the merits can be made final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant's amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

The MPEP states:

"Where the requirements are not complied with, the examiner has the option of making the next Office action final or non-final."

This means that if the applicant hasn't fully addressed all issues or introduced new issues, the examiner can choose to make the next action final. However, if the examiner introduces new grounds of rejection not necessitated by the applicant's actions, the action should not be made final.

To learn more:

Question 37

What are the options for amendments after final rejection?

Accepted Answer

After a final rejection, an applicant has several options for amendments:

Cancel claims or comply with form requirements from a previous Office action
Present rejected claims in better form for appeal consideration
Submit amendments touching the merits of the application, if good and sufficient reasons are shown

As stated in MPEP 714.12: Any amendment that will place the application either in condition for allowance or in better form for appeal may be entered. However, the examiner's approval is generally required for amendments filed after final action.

To learn more:

Question 38

What are the criteria for making a rejection final in patent examination?

Accepted Answer

What are the criteria for making a rejection final in patent examination?

An examiner can make a rejection final under specific circumstances. According to MPEP 706.07(a):

'Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant's amendment of the claims nor based on information submitted in an information disclosure statement.'

The criteria for making a rejection final include:

It's a second or subsequent action on the merits.
No new grounds of rejection are introduced, unless necessitated by the applicant's amendments.
The rejection is not based on newly submitted information in an IDS.
The applicant's arguments have been fully addressed and are not persuasive.

If these criteria are met, the examiner can make the rejection final, closing prosecution on the merits.

To learn more:

MPEP 706.07(a)

Question 39

How should patent examiners handle new grounds of rejection?

Accepted Answer

How should patent examiners handle new grounds of rejection?

Patent examiners must carefully consider how to handle new grounds of rejection during the examination process. According to MPEP 706:

"The examiner should never lose sight of the fact that in every case the applicant is entitled to a full and fair hearing, and that a clear issue between applicant and examiner should be developed, if possible, before appeal."

This means that examiners should:

Introduce new grounds of rejection as early as possible in prosecution
Provide a clear explanation of the new rejection
Allow the applicant an opportunity to respond
Consider making the next action final if the new ground of rejection was necessitated by the applicant's amendment or based on information submitted in an IDS

If a new ground of rejection is introduced in a final Office action, the applicant may be entitled to reopen prosecution or file a request for continued examination (RCE) to address the new issues.

To learn more:

Question 40

How should an examiner indicate a first action final rejection?

Accepted Answer

When an examiner needs to make a first action final rejection, they should use specific form paragraphs provided in the Manual of Patent Examining Procedure (MPEP). According to MPEP 706.07(b):

"A first action final rejection should be made by using Form Paragraphs 7.41 or 7.41.03, as appropriate."

The MPEP provides specific form paragraphs for different situations:

Form Paragraph 7.41 is used for continuation or substitute applications.
Form Paragraph 7.41.03 is used for Continued Prosecution Applications (CPA) in design applications.
Form Paragraph 7.42.09 is used for first action final rejections following a Request for Continued Examination (RCE).

These form paragraphs include standard language explaining the reasons for the final rejection and informing the applicant of the time period for response.

To learn more:

Question 41

How many submissions are allowed under the Transitional After-Final Practice?

Accepted Answer

The Transitional After-Final Practice allows for up to two submissions after a final rejection. According to MPEP 706.07(g):

An applicant whose application is eligible for the transitional further limited examination procedure set forth in 37 CFR 1.129(a) is entitled to consideration of two after final submissions.

However, it's important to note: If such an applicant has filed two submissions under 37 CFR 1.129(a) and the application is again under a final rejection, applicant is not entitled to have any additional submissions considered under 37 CFR 1.129(a).

After exhausting these two submissions, any further submissions will be treated according to standard after-final practice under 37 CFR 1.116.

To learn more:

Question 42

How is a premature final rejection different from the tenability of a rejection?

Accepted Answer

The prematureness of a final rejection is distinct from the tenability (validity) of the rejection itself. As stated in MPEP 706.07(c):

This is purely a question of practice, wholly distinct from the tenability of the rejection.

In other words:

Prematureness refers to whether the applicant has been given a fair opportunity to respond to the rejection before it was made final.
Tenability refers to whether the substantive reasons for the rejection are valid and well-founded.

An applicant can challenge the prematureness of a final rejection without necessarily disputing the underlying reasons for the rejection.

To learn more:

MPEP 706.07(c)

Question 43

How does the USPTO handle prior art exceptions after final rejection?

Accepted Answer

The USPTO gives special consideration to submissions concerning prior art exceptions even after a final rejection. As stated in MPEP 714.12:

Applicant's submissions concerning the prior art exception under 35 U.S.C. 102(b)(2)(C) or prior art disqualification under pre-AIA 35 U.S.C. 103(c) are entitled to being considered even after a final rejection has been made.

If such a submission successfully overcomes the rejection, the USPTO should acknowledge this by modifying the status of the claims, potentially allowing them or reopening prosecution if necessary. However, applicants should be aware that failing to make these submissions earlier in the process may be considered a failure to engage in reasonable efforts to conclude prosecution, potentially affecting patent term adjustment.

To learn more:

Question 44

How does filing a reply within 2 months affect the reply period?

Accepted Answer

Filing a complete first reply within 2 months of the final Office action can affect the reply period in several ways:

If the reply places the application in condition for allowance, it will be processed as an allowance with no extension fees due.
If the reply nearly places the application in condition for allowance, except for minor formal matters, the examiner can make the necessary changes and process it as an allowance with no extension fees due.
If the reply does not place the application in condition for allowance, an advisory action will be issued, and "the SSP for reply expires 3 months from the date of the final rejection or as of the mailing date of the advisory action, whichever is later."

This variable reply period gives applicants an opportunity to potentially avoid extension fees while still allowing for a full 3-month reply period if needed.

To learn more:

Question 45

How does an Information Disclosure Statement (IDS) affect the finality of a rejection in patent examination?

Accepted Answer

An Information Disclosure Statement (IDS) can affect the finality of a rejection in patent examination, particularly if it introduces new prior art that necessitates a new ground of rejection. According to MPEP 706.07(a):

The information submitted with an information disclosure statement may necessitate making a new rejection (i.e., citing the newly submitted reference either alone or in combination with other art) that was not necessitated by applicant's amendment of the claims. If such a new ground of rejection is made, the next Office action cannot be made final.

However, it's important to note that not all IDSs will prevent a final rejection. The MPEP further clarifies:

If information submitted in an IDS is used only as evidence to support a new rejection, the next Office action may be made final.
If the IDS is filed after a final rejection but before or on the date of filing an appeal, the information submitted will not be considered as part of the basis for the final rejection.

In essence, an IDS can affect the finality of a rejection if it introduces new prior art that forms the basis for a new ground of rejection not necessitated by the applicant's amendment of the claims.

To learn more:

Question 46

How does an Information Disclosure Statement (IDS) affect final rejections?

Accepted Answer

An Information Disclosure Statement (IDS) can affect final rejections in patent examination as follows:

If an IDS is filed during the period set forth in 37 CFR 1.97(c) with the required fee, the examiner may use the information in the IDS to make the next Office action final, even if the claims haven't been amended.
The examiner can make a final rejection based on the IDS information as long as no other new ground of rejection is introduced that wasn't necessitated by claim amendments.

As stated in MPEP 706.07(a): "Where information is submitted in an information disclosure statement during the period set forth in 37 CFR 1.97(c) with a fee, the examiner may use the information submitted, e.g., a printed publication or evidence of public use, and make the next Office action final whether or not the claims have been amended, provided that no other new ground of rejection which was not necessitated by amendment to the claims is introduced by the examiner."

To learn more:

Question 47

How does an examiner handle new issues raised after final rejection in patent applications?

Accepted Answer

When new issues are raised after a final rejection in a patent application, the examiner must follow specific procedures as outlined in MPEP 706.07. The MPEP states:

"An amendment filed after a final rejection, but before or on the date of filing a Notice of Appeal, may be entered upon or after filing of an appeal brief or filing of a request for continued examination (RCE) pursuant to 37 CFR 1.114, if the amendment meets the requirements of 37 CFR 1.116."

This means that:

If the amendment is filed before or on the date of filing a Notice of Appeal, it may be entered if it meets the requirements of 37 CFR 1.116.
The examiner can consider the amendment after the filing of an appeal brief or an RCE.
If the amendment doesn't meet the requirements or raises new issues, the examiner may refuse to enter it and maintain the final rejection.

The examiner's decision depends on whether the new issues can be addressed without further search or consideration, and whether they were necessitated by the applicant's amendment of the claims.

To learn more:

Question 48

How do extensions of time work with final rejections?

Accepted Answer

For final rejections, the USPTO has a specific procedure for extensions of time. The MPEP states:

If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of the 3-month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the advisory action advising applicant of the status of the application, but in no event can the period extend beyond 6 months from the date of the final rejection.

This means that if you reply within 2 months of a final rejection and don't receive an advisory action within 3 months, your extension time (and fees) will be calculated from when the advisory action is mailed. However, the total time can never exceed 6 months from the final rejection date.

The examiner must include specific language in each final rejection to explain this procedure. It's important to note that This procedure applies only to a first reply to a final rejection.

To learn more:

Question 49

How can an applicant respond to a final rejection in a patent application?

Accepted Answer

How can an applicant respond to a final rejection in a patent application?

When faced with a final rejection, an applicant has several options to respond:

File an appeal: Challenge the examiner's decision before the Patent Trial and Appeal Board.
File a request for continued examination (RCE): Pay a fee to continue prosecution with the examiner.
File a continuation or divisional application: Submit a new application based on the same disclosure.
Amend the claims: Make amendments that do not necessitate further search or consideration.
Submit evidence: Provide affidavits or declarations to support patentability.

The MPEP 706.07 states:

'The applicant's reply must either cancel the claims rejected or submit evidence and/or amendments which, in the examiner's judgment, overcome the rejection.'

It's important to note that after final rejection, the examiner is not required to enter amendments that require additional search or consideration.

To learn more:

Question 50

How can an applicant challenge a premature final rejection?

Accepted Answer

If an applicant believes a final rejection is premature, they can challenge it through a petition process. According to MPEP 706.07(c), the issue of prematureness "is reviewable by petition under 37 CFR 1.181." This means that applicants can file a petition to the USPTO requesting a review of the premature final rejection. The MPEP directs readers to MPEP § 1002.02(c) for more information on the petition process.

To learn more:

Question 51

How are replies after final processed and considered by the USPTO?

Accepted Answer

The USPTO has specific guidelines for processing and considering replies after a final rejection, as outlined in MPEP 706.07(f):

"Replies after final should be processed and considered promptly by all Office personnel." This emphasizes the importance of timely handling of these responses.
"Replies after final should not be considered by the examiner unless they are filed within the SSP or are accompanied by a petition for an extension of time and the appropriate fee (37 CFR 1.17 and 37 CFR 1.136(a))." This applies to both initial replies and supplemental replies.
If a reply after final places the application in condition for allowance, it should be processed as such, and no extension fees are due.
If the reply nearly places the application in condition for allowance, except for minor formal matters, the examiner can make the necessary changes and process it as an allowance.
If the reply does not place the application in condition for allowance, an advisory action will be issued.

It's important to note that if prosecution is to be reopened after a reply to a final Office action, "the finality of the previous Office action should be withdrawn to avoid the issue of abandonment and the payment of extension fees."

To learn more:

Question 52

How are extension fees calculated after a final rejection?

Accepted Answer

The calculation of extension fees after a final rejection depends on several factors, as outlined in MPEP 706.07(f):

If a complete first reply is filed within 2 months and an advisory action is issued, the shortened statutory period (SSP) expires 3 months from the date of the final rejection or on the date of the advisory action, whichever is later.
Extension fees are calculated from the end of the SSP. As stated in the MPEP, "Extension fees cannot be prorated for portions of a month."
If the advisory action is mailed after the end of the 3-month period, "the shortened statutory period will expire on the date the examiner mails the advisory action and any extension of time fee would be calculated from the mailing date of the advisory action."

It's important to note that "In no event can the statutory period for reply expire later than 6 months from the date of the final rejection." This sets an absolute limit on extensions.

To request an extension, a petition for an extension of time under 37 CFR 1.136(a) must be filed along with the appropriate fee as provided in 37 CFR 1.17.

To learn more:

Question 53

How are appeals handled in Secrecy Order patent cases?

Accepted Answer

For patent applications under a Secrecy Order, prosecution proceeds as normal, including issuing final rejections that the applicant must properly reply to. If the applicant files an appeal, it must be completed to prevent abandonment of the application.

However, as noted in MPEP 130, "such appeal will not be set for hearing by the Patent Trial and Appeal Board until the Secrecy Order is removed, unless specifically ordered by the Commissioner for Patents."

Question 54

How are amendments treated after an Ex parte Quayle action?

Accepted Answer

After an Ex parte Quayle action, amendments are treated similarly to amendments after final rejection. MPEP 714.14 states:

Amendments touching the merits are treated in a manner similar to amendments after final rejection, though the prosecution may be continued as to the formal matters.

This means that while amendments addressing the formal matters are generally entered, substantive amendments may be treated more restrictively. For guidance on handling such amendments, refer to MPEP § 714.12 and MPEP § 714.13.

To learn more:

Question 55

How are amendments handled when a final rejection is withdrawn?

Accepted Answer

When a final rejection is withdrawn, the handling of amendments is addressed in MPEP 706.07(e). The manual states:

"When a final rejection is withdrawn, all amendments filed after the final rejection are ordinarily entered."

This means that:

Any amendments submitted by the applicant after the final rejection was issued will typically be considered and entered into the application.
These amendments will be treated as if they were filed in response to a non-final Office action.
The examiner will consider these amendments when reevaluating the patentability of the claims.

It's important for applicants to be aware of this practice, as it provides an opportunity for previously filed amendments to be considered if the final rejection is withdrawn.

To learn more:

MPEP 706.07(e)

Question 56

Can multiple interviews be conducted after a final rejection?

Accepted Answer

While uncommon, multiple interviews after a final rejection are possible under certain circumstances. The MPEP 713.09 states:

A second or further interview after a final rejection may be held if the examiner is convinced that it will expedite the issues for appeal or disposal of the application.

This means that additional interviews may be granted if the examiner believes they will significantly help in resolving the case or preparing it for appeal.

To learn more:

Question 57

Can interviews be conducted after the expiration of the shortened statutory period?

Accepted Answer

Yes, interviews can be conducted after the expiration of the shortened statutory period (SSP) for reply to a final Office action, but there are specific conditions:

According to MPEP 706.07(f), "Interviews may be conducted after the expiration of the shortened statutory period for reply to a final Office action but within the 6-month statutory period for reply without the payment of an extension fee."

This provision allows for flexibility in communication between the examiner and the applicant, even after the initial reply period has expired. However, it's important to note that while the interview can be conducted without an extension fee, any written reply to the final Office action would still require an appropriate extension of time and fee if filed after the SSP.

Applicants should also be aware that the 6-month statutory limit still applies, as stated earlier in the section: "In no event can the statutory period for reply expire later than 6 months from the mailing date of the final rejection."

To learn more:

Question 58

Can I submit an affidavit after a final rejection in a patent application?

Accepted Answer

Yes, you can submit an affidavit after a final rejection, but there are specific conditions. According to MPEP 715.09:

Affidavits and declarations submitted under 37 CFR 1.131(a) and other evidence traversing rejections are considered timely if submitted: ... (C) after final rejection, but before or on the same date of filing an appeal, upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e).

Additionally, you can submit an affidavit after the prosecution is closed (including after final rejection) if you file it with a request for continued examination (RCE) or a continued prosecution application (CPA) in design applications.

To learn more:

Question 59

Can I amend claims after a final rejection in a patent application?

Accepted Answer

Amending claims after a final rejection is not an absolute right. The MPEP states:

"It should be kept in mind that applicant cannot, as a matter of right, amend any finally rejected claims, add new claims after a final rejection (see 37 CFR 1.116) or reinstate previously canceled claims."

However, amendments may be entered if they:

Merely cancel claims
Adopt examiner suggestions
Remove issues for appeal
Otherwise require only a cursory review by the examiner

In other cases, the applicant must provide a showing under 37 CFR 1.116(b)(3) to justify the entry of the amendment.

To learn more:

37 CFR 1.116

Question 60

Can an examiner withdraw the finality of a rejection after an application is abandoned?

Accepted Answer

No, an examiner cannot withdraw the finality of a rejection once an application is abandoned. The MPEP 706.07(d) explicitly states:

"The examiner cannot withdraw the final rejection once the application is abandoned."

This emphasizes the importance of addressing final rejections and considering requests for reconsideration before an application reaches abandoned status.

To learn more:

Question 61

Can an examiner make a rejection final after a first Office action on the merits?

Accepted Answer

Generally, an examiner cannot make a rejection final after a first Office action on the merits. However, there are exceptions to this rule. According to MPEP 706.07:

'Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant's amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).'

This means that in most cases, a final rejection can only be made after the second or subsequent actions on the merits, unless specific conditions are met.

To learn more:

Question 62

Can an applicant request reconsideration after final rejection without amending claims?

Accepted Answer

Yes, an applicant can request reconsideration after final rejection without amending claims. The MPEP 714.12 states:

"An amendment after final rejection ... may be made with or without request for reconsideration."

This means that an applicant can submit arguments for reconsideration without necessarily proposing amendments to the claims. Such a request might involve pointing out errors in the examiner's reasoning or providing evidence to support the patentability of the claims as they stand.

To learn more:

Question 63

Can an amendment be entered after a final rejection in a patent application?

Accepted Answer

Generally, amendments after a final rejection are not entered as a matter of right. However, there are exceptions as noted in MPEP 714.19:

"An amendment presenting an unpatentable claim, or a claim requiring a new search or otherwise raising a new issue in an application whose prosecution before the primary examiner has been closed, as where [...] All claims have been finally rejected (for exceptions see MPEP § 714.12, § 714.13, and § 714.20, item (D))."

This means that while most amendments after final rejection are denied entry, there are specific situations outlined in MPEP sections 714.12, 714.13, and 714.20 where such amendments may be considered. These typically include amendments that do not require further search or consideration, or those that place the application in condition for allowance.

To learn more:

MPEP 714.19

Question 64

Can affidavits or evidence be submitted after a final rejection?

Accepted Answer

Yes, affidavits or other evidence can be submitted after a final rejection, but under specific conditions. According to MPEP 714.12:

An affidavit or other evidence submitted after a final rejection or other final action (§ 1.113) in an application or in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913 but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title), may be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented.

This means that to submit affidavits or evidence after final rejection, you must demonstrate good reasons for the late submission and explain why it couldn't have been presented earlier.

To learn more:

Patent Law FAQ

Here’s the complete FAQ:

MPEP 130-Examination of Secrecy Order Cases (1)

How are appeals handled in Secrecy Order patent cases?

Patent Law (1)

How are appeals handled in Secrecy Order patent cases?