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Final Office Action Rejections for Patent Applications: It Ain’t Over until the Fat Lady Sings…Usually

The patent process can be a long and, at times, tedious process. Many inventors assume that once you file your application with the United States Patent and Trademark Office (USPTO), the hard work is done. Unfortunately, for most cases, the hard work has just begun. It is highly unusual for a patent application to not be rejected and receive at least one Office Action from the patent examiner. Typically, inventors will receive multiple Office Actions in which their invention is rejected for any number of reasons, including lack of novelty, obviousness and ineligible subject matter. When an inventor receives a Final Office Action, he has now come to a critical crossroads in the prosecution highway. The inventor may choose from three options: (1) Abandon the application, (2) File a Request for Continued Examination and pay a fee or (3) file a Notice of Appeal.

Abandonment means exactly that. The inventor will either not file a response within the required time period, or will file a response with the USPTO stating that the application is being abandoned. Some patent practitioners actually use the abandonment route as a tactical tool. For instance, an application has been rejected numerous times for dubious reasons and the communication between the examiner and patent practitioner appears to have reached a dead-end. The patent practitioner may file a continuation application with the USPTO and then abandon the parent application for which there is the outstanding Final Office Action. The patent practitioner typically uses this strategy in an attempt to get a different examiner assigned to the review of the now newly-filed continuation application. Of course, if the previous examiner gets assigned to the continuation application, then this strategy has failed.

The second option for the inventor is to file what is called a Request for Continued Examination or RCE. If an inventor files an RCE with the required fee and a submission (a submission may be an Information Disclosure Form, an amendment to the specification, claims or drawings, new arguments or new evidence for supporting patentability), the examiner will withdraw the finality of the Office Action and the submission will be entered and considered by the examiner. Essentially, the RCE allows the inventor to file a second application to keep the prosecution of the first application alive. The RCE application stays with the same examiner that was reviewing the first application and keeps the same application serial number. Filing an RCE is capitalism at its best: pay more money and file a submission to buy another full examination of your application. However, a potential downside to filing an RCE is, since the application is staying with the same examiner, that examiner may just repeat the same basis for his rejections without considering the newly filed arguments.

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