Making Lemonade With the U.S. Patent and Trademark Office

Ever hear the saying, “when life gives you lemons, make lemonade?”  When the U.S. Patent and Trademark Office (USPTO) renders a Final Office Action (FOA), or in this analogy, a “lemon,” some practitioners believe responding with a written response and Request for Continued Examination (RCE) is an automatic course of action. However, why not try and turn the setback into a step forward? What do I mean by this?

Consider first, that upon receiving an initial Office Action, an applicant has limited opportunities for response. Particularly, while the applicant may be granted an interview prior to filing a written response, there is limited opportunity for any other back-and-forth with the examiner. This is not the case when deciding on how to respond to an FOA. Further detailed herein are several ways in which an applicant may choose to respond.

One way to respond to an FOA is to file an early response, i.e., within two months of the mailing date of the FOA. This may be a good option for applicants that have minor items to address in order to place the application in condition for allowance. Some examples involve applications that have claim form issues involving indefiniteness or lack of clarity, or perhaps have issues with the specification on one or more of the drawings. Arguments on prior art rejections may also be considered, relative to the claims previously reviewed or close in form thereto, but more significant amendments are often not appropriate. My experience is that examiners are not able to spend a significant amount of time on complex issues with these early responses; however, insight can still be gleaned from the examiner’s comments, which can be helpful in further advancing prosecution.

Another approach in responding to an FOA is to file a response under the After Final Consideration Pilot 2.0 (AFCP) program. While the renewed period for this program expires on September 30, 2024, it has been repeatedly extended by the USPTO, and it is widely believed that it will be extended again. A response filed under the AFCP program provides examiners time to consider complex issues; however, applicants are required to file a non-broadening amendment of at least one independent claim. An advantage of this program over the early response filing is that an examiner can schedule an interview with the applicant, provided the application is not otherwise allowed. Through such interview, valuable feedback can be obtained from the examiner to further prosecution of the application.

Still another approach is to request an interview with the examiner. An examiner is not required to grant the interview at the stage of FOA; however, I have often found examiners are willing to grant them. As alluded to above, the examiner’s perspective/guidance can be gained from an interview.

Finally, the applicant can file a response with an RCE, which will lead to another round of examination. Yet, before such a filing, prosecution can be advanced via filing one or more of an early response and an AFCP response, and/or requesting an interview. As an aside, in my experience, it has always been helpful to discuss response strategy in advance with the examiner.

Circling back to the initial analogy, any interaction with the examiner can often produce the sugar needed to convert the setback of an FOA (lemon) to progress or a step forward (lemonade) for the application. If you are facing an FOA situation in which you need help or guidance, please let us know. We are happy to discuss any of the above-noted options in more detail.

  • John S. Parzych

    John is a shareholder in Fredrikson’s Intellectual Property Group. He is registered to practice before the U.S. Patent and Trademark Office. His practice focuses on patent preparation and prosecution, counseling clients ...

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