“THIS ACTION IS MADE FINAL.”
No practitioner likes seeing this phrase in an Office action. But what does this phrase mean, and how does it affect prosecution? Because the possible responses and strategies for responding to a final Office action are often taken for granted, this article reviews the “first principles” of after-final practice. Specifically, this article explains (i) the “final” Office action, (ii) when an Examiner is allowed to designate an Office action as final, (iii) strategies for challenging the prematurity of a final designation of an Office action, (iv) the types of responses allowed to a final Office action, and (v) how to instruct prosecution counsel to respond to a final Office action.
What is a Final Office Action?
During patent prosecution, the U.S. Patent Office will issue an examination report of the patent application, referred to as an “Office Action.” A number of Office Actions may be issued during prosecution of a patent application, and an Applicant may file a response to the Office Action rebutting any objection/rejection set forth by the Office. Unfortunately, the Patent Rules1 do not provide a concise definition of a “final” or “non-final” Office action. Rather, these Office actions are defined by the types of replies allowed by an Applicant to the respective type of Office action. Generally, there are no limitations on the types of replies allowed by an Applicant to non-final Office actions, and an Applicant is allowed to freely amend any pending claims.2 In contrast, replies to a final Office action are generally limited to canceling claims, filing an appeal, and/or filing an RCE among a few other options.3 These (and other) options are discussed in detail below. Generally, non-final Office actions are preferred over final Office actions because they allow the Applicant a full range of responses.
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