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Woodard, Emhardt, Moriarty, McNett & Henry LLP Final Office Action Practice Kris Lynch Patent Prosecution Luncheon.

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Presentation on theme: "Woodard, Emhardt, Moriarty, McNett & Henry LLP Final Office Action Practice Kris Lynch Patent Prosecution Luncheon."— Presentation transcript:

1 Woodard, Emhardt, Moriarty, McNett & Henry LLP Final Office Action Practice Kris Lynch Patent Prosecution Luncheon

2 Woodard, Emhardt, Moriarty, McNett & Henry LLP Final Rejection Defined 37 C.F.R. § C.F.R. § MPEP , MPEP , May be issued on a first actionMay be issued on a first action –continuations having claims drawn to same invention as the parent and would have been a proper final rejection if entered in parent Typically issued in a second or subsequent actionTypically issued in a second or subsequent action

3 Woodard, Emhardt, Moriarty, McNett & Henry LLP Was the Final Action Proper § (a)Did the examiner introduce 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 after final? MPEP § (a) If so, request that Examiner withdraw finality of the office actionIf so, request that Examiner withdraw finality of the office action –Example: amendments after final were not entered but receive a final rejection in a first action in a continuation

4 Woodard, Emhardt, Moriarty, McNett & Henry LLP Options for Responding File a response w/ or w/out an amendment under 37 C.F.R. § 1.116File a response w/ or w/out an amendment under 37 C.F.R. § –Amendments at discretion of examiner –Possible interview File a declaration under 37 C.F.R. § 1.132File a declaration under 37 C.F.R. § File a continuing application or request for continued examination (RCE)File a continuing application or request for continued examination (RCE) –Done to enter an amendment or consider new art –More time to prepare a declaration Appeal to the Board of Patent Appeals and Interferences under 37 C.F.R. § 1.191Appeal to the Board of Patent Appeals and Interferences under 37 C.F.R. § 1.191

5 Woodard, Emhardt, Moriarty, McNett & Henry LLP File a Response Argue on the merits that the cited references do not applyArgue on the merits that the cited references do not apply –Examiner unlikely to withdraw final rejection if same arguments are presented Likely only useful where remaining rejection(s) is very minor or where it is believed the Examiner has made an oversightLikely only useful where remaining rejection(s) is very minor or where it is believed the Examiner has made an oversight

6 Woodard, Emhardt, Moriarty, McNett & Henry LLP File an Amendment and Response under 37 C.F.R. § To comply with Examiners suggestionsTo comply with Examiners suggestions To reduce issues on appeal i.e., cancel claimsTo reduce issues on appeal i.e., cancel claims To present claims in better form for consideration on appealTo present claims in better form for consideration on appeal If they raise new issues of patentability, the Examiner will likely refuse to enter themIf they raise new issues of patentability, the Examiner will likely refuse to enter them

7 Woodard, Emhardt, Moriarty, McNett & Henry LLP Advisory Action If reply to final office action within 2 months, the shortened statutory period will expire at 3 months from final office action or from the date the advisory action is mailed from the PTO, whichever is laterIf reply to final office action within 2 months, the shortened statutory period will expire at 3 months from final office action or from the date the advisory action is mailed from the PTO, whichever is later –Save on extension fees –In no event can the statutory period expire later than 6 months from date of final office action

8 Woodard, Emhardt, Moriarty, McNett & Henry LLP File a Continuing Application Continuation, divisional or CIP under 37 C.F.R. § 1.53(b)Continuation, divisional or CIP under 37 C.F.R. § 1.53(b) –Different filing date and serial number Continued Prosecution Application under 37 C.F.R. § 1.53(d) (Designs only)Continued Prosecution Application under 37 C.F.R. § 1.53(d) (Designs only)

9 Woodard, Emhardt, Moriarty, McNett & Henry LLP File a RCE under 37 C.F.R. § Removes finality of most recent office actionRemoves finality of most recent office action –Can be done by certificate of mailing –Same filing date and serial number Requires a submissionRequires a submission –Typically a response under 37 C.F.R. § if an outstanding office action exists Also requires a fee set forth in 37 C.F.R. § 1.17(e)Also requires a fee set forth in 37 C.F.R. § 1.17(e)

10 Woodard, Emhardt, Moriarty, McNett & Henry LLP Continuation vs. RCE Continuation if want to keep application pending longer to target infringers or to provoke an interferenceContinuation if want to keep application pending longer to target infringers or to provoke an interference –or to prepare a declaration Continuation if some claims are allowed and want an issued patent while pursuing rejected claims in another applicationContinuation if some claims are allowed and want an issued patent while pursuing rejected claims in another application Continuation if claims are going to be independent and distinct from parent 37 C.F.R. § 1.145Continuation if claims are going to be independent and distinct from parent 37 C.F.R. § 1.145

11 Woodard, Emhardt, Moriarty, McNett & Henry LLP Continuation vs. RCE Continued RCEs generally have a lower costRCEs generally have a lower cost –Save on additional claim fees RCEs have a faster turnaround timeRCEs have a faster turnaround time Generally no double patenting issuesGenerally no double patenting issues Easiest choice if looking to simply have an amendment or piece of prior art consideredEasiest choice if looking to simply have an amendment or piece of prior art considered

12 Woodard, Emhardt, Moriarty, McNett & Henry LLP New PTO Rules (Rumors) If received first office action on the meritsIf received first office action on the merits –2 Continuations + 1 RCE If no first office action on the meritsIf no first office action on the merits –3 Continuations + 1 RCE No limit on divisionalsNo limit on divisionals Possible implementation in September- NovemberPossible implementation in September- November

13 Woodard, Emhardt, Moriarty, McNett & Henry LLP Strategies for New Rules Review applications to determine how many continuations/RCEs have been filed or are likely to be filed in the futureReview applications to determine how many continuations/RCEs have been filed or are likely to be filed in the future Only option at final may be to appealOnly option at final may be to appeal

14 Woodard, Emhardt, Moriarty, McNett & Henry LLP Appeals Can appeal any claim that has been rejected twiceCan appeal any claim that has been rejected twice –Doesnt require a final action File a Notice of Appeal under 37 C.F.R. § 1.191(a)File a Notice of Appeal under 37 C.F.R. § 1.191(a) –Within 3 months extendable to 6 months –Used as a tool to avoid abandonment File an Appeal Brief under 37 C.F.R. § 192(b)File an Appeal Brief under 37 C.F.R. § 192(b) –2 months from of Notice of Appeal (measured from day of receipt) extendable for another 5 months –Can also file an RCE which effectively removes the appeal request MPEP §

15 Woodard, Emhardt, Moriarty, McNett & Henry LLP Pre-Appeal Brief Conference Pilot Program File at same time as Notice of AppealFile at same time as Notice of Appeal –5 or less total pages –Decision within 45 days Use if rejections are clearly not proper and are without basisUse if rejections are clearly not proper and are without basis –e.g., limitation is not met by a reference or the Examiner failed to show proper motivation for making a modification in an obviousness rejection

16 Woodard, Emhardt, Moriarty, McNett & Henry LLP Appeals Continued Board reverses:Board reverses: –Forwarded to Examiner to issue a Notice of Allowance Board Affirms:Board Affirms: –Abandonment –File continuation Abandon parentAbandon parent –Petition Board for rehearing under 37 C.F.R. § –Bring civil action in district court for DC under 35 U.S.C. § 146 –Appeal to Federal Circuit

17 Woodard, Emhardt, Moriarty, McNett & Henry LLP Final Action Strategies Some Allowed ClaimsSome Allowed Claims –Respond to try and overcome the rejected claims –Cancel rejected claims and pursue them in a continuation May not be best option once new rules are implementedMay not be best option once new rules are implemented May end up on appealMay end up on appeal

18 Woodard, Emhardt, Moriarty, McNett & Henry LLP Final Action Strategy Continued All Claims Remain RejectedAll Claims Remain Rejected –Try to negotiate allowance with the Examiner –RCE or Continuation Consider filing notice of appeal to delay responseConsider filing notice of appeal to delay response –Appeal To limit prosecution historyTo limit prosecution history If no intention of amending or otherwise limiting claim scopeIf no intention of amending or otherwise limiting claim scope


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