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Options for Dealing with Patent Office Final Rejections

Posted on Aug 24, 2016 in Articles

This article originally appeared in The Legal Intelligencer on August 17, 2016.

It happened again. Your company is trying to obtain valuable patent rights, and for the second time (or perhaps the third time, or the fourth time) the U.S. Patent and Trademark Office (USPTO) has rejected your patent application. Is there an end in sight?

While frustrating and expensive, there are a number of options that are available to break through a “cycle” of rejections, and these can usually advance an application forward to the eventual granting of a U.S. patent. Recently, in fact, the USPTO added a new procedure to the patent attorney’s arsenal, and it will be interesting to see if this latest alternative is effective (more on that later).

But first a little background. Most patent applications, once examined by a USPTO examiner, receive one or more rejections, meaning (allegedly) that the examiner does not consider the invention to be patentable, or objects to the form in which the applicant is attempting to patent the invention.

USPTO examiners issue official actions in which the rejections are stated, along with explanations of why the rejections have been made. Often the official actions include evidence, such as prior patents, to support the examiners’ positions that ­inventions are not patentable. It is up to the patent attorney to review the rejections and to prepare a persuasive response, with the hopes that rejections will be withdrawn and a patent will subsequently issue.

Unfortunately, the USPTO’s response to the patent attorney may be a ­second (or final) rejection, typically what is called a final official action. The issuance of a final official action starts a ­six-month clock ­running, and unless certain things take place, then upon expiration of the ­six-month time period, the patent ­application will be deemed abandoned. Unless the invention has lost all commercial value, that’s not the outcome that each interested party desires.

Yet there is another important wrinkle. Historically, once a final official action had been issued, USPTO examiners were no longer allocated time to work on a patent application. Therefore, attempts to modify a patent application to overcome rejections in the final official ­action stage often fell on deaf ears. A procedure called a request for continued examination (RCE) is one option that may then be invoked whereby a form is filed, a fee is paid, and the ­applicant is then given two more “bites” at the proverbial apple to convince the USPTO to issue a patent. RCEs may be filed indefinitely, as long as a patent application remains pending. Unfortunately, every time an RCE is filed an additional government fee needs to be paid.

Several years ago, however, the USPTO created a ­procedure that would sometimes avoid the need for an RCE and allow an application to be amended, and possibly allowed, even though a final official action had been ­issued. Called the after final consideration pilot 2.0 (AFCP), this option obligates a patent examiner to spend a limited amount of time considering an amendment after final official action and allowing an application if all of the ­requirements for ­patentability have been met. On the one hand, the program yields great results if a patent application allowance indeed occurs, and without going through the ­expense and delay of filing an RCE. On the other hand, to reiterate, the amount of time the program gives an examiner to consider an amendment is “limited,” and it is not uncommon for an applicant to attempt to use the ­program and be told by the USPTO that a proposed amendment cannot be ­adequately considered in the time allotted. There is also a subjective aspect to how examiners apply the program. Some examiners maintain that they have insufficient time to consider minor amendments while other examiners consider more extensive ­amendments and allow applications that invoke the program.

There is another option available when an application has received a final official action, and that is to file an appeal to the patent trial and appeal board (PTAB). If a final official action has been issued, and the applicant believes that the rejections are wrong, an appeal brief can be filed and the PTAB can review the examiner’s ­rejections and usually either affirm (agree with) those rejections or reverse (disagree with) those rejections. Affirmation may result in ­abandonment, or the applicant can file an RCE, modify their patent claims and try again with the examiner. Reversal of the rejections almost always will result in ­allowance and subsequent 
patent grant.

Earlier this month, the USPTO created yet another option for dealing with a final official action, and this brand new ­procedure has attracted substantial interest. Under the post-prosecution pilot program (P3), a ­patent applicant can request reconsideration of a final official action rejection, and also can propose an amendment to the patent application’s claims. This must be done within two months of the final official action.

What makes this procedure different from AFCP is that the response is not evaluated by one patent examiner but by three, which includes the examiner that already has been examining the case. Once this option is initiated for a particular patent application, and if all of the requirements of the program are met, a conference is scheduled between the applicant (and/or its attorney) and the three examiners. The applicant may ­participate in the conference in person, by phone, or by using a video conferencing tool such as WebEx. The conference begins with the applicant making a presentation that is limited to 20 minutes. The applicant is excused from the conference at the end of the presentation and the three examiners confer by themselves. A written panel decision is then mailed to the applicant indicating one of the following: the final rejection will stand; the ­application has been allowed; or a decision has been made to “reopen prosecution” (which usually means that the USPTO will formulate new arguments to reject the patent ­application). The proposed amendment that ­accompanied the P3 request may or may not have been ­considered prior to the conference, again depending upon the amount of time ­required to properly ­consider the proposal.

The USPTO has high hopes for the P3 program. In a statement published in the federal register, the USPTO indicated that P3 is “designed to reduce the number of appeals and issues to be taken up on appeal to the PTAB, and reduce the number of requests for continued examination (RCE), and simplify the after final landscape.” By having three examiners evaluate a final official action, chances are improved that erroneous rejections will be identified. Also, the ability to deliver an oral presentation to the three examiners may help to identify and resolve issues that are preventing allowance. Patent attorneys have only recently begun to use the P3 program, and so the jury is still out as to how effective this option will be.

While a significant number of patent applications result in final official actions, every situation is different. The various options that are available need to be ­considered so that the most effective response to a final official action can be selected.

– By Lawrence E. Ashery

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