United States: Evaluating When USPTO Actions Should Be Made Final

As patent practitioners are well aware, U.S. patent examiners will issue a first action on the merits of a patent application as non-final and typically issue a second action on the merits as final. The finality of second actions is so universal that the finality of an action may be accepted as proper by a patent applicant when, in fact, the action was improperly deemed final. It therefore behooves applicants to always evaluate whether a final action on the merits was properly made final to have improper final actions withdrawn before the applicant incurs unnecessary costs and/or delays in prosecution.

Section 706 of the Manual of Patent Examining Procedure (MPEP) outlines the handling of final actions by the U.S. Patent and Trademark Office (USPTO). Under general USPTO practice, second or subsequent actions on the merits can be made final. Additionally, first actions on the merits after the filing of a Request for Continued Examination (RCE) can be made final. These general rules have important exceptions that can guide an applicant in determining the appropriateness of an action's finality. For instance, applicants can ask themselves the following questions after receipt of a final action:

1. Was any claim that was not amended in the immediately prior response rejected on new grounds?

If not, then the action's finality is likely proper. However, if the amendment was minor, such as correcting a typographical error or clarifying antecedent basis to address a 35 U.S.C. § 112 rejection, the action's finality is likely improper if the amendment did not necessitate the new ground(s) of rejection. Note that MPEP § 706.07(a) specifies that if any claim that was not amended in the immediately prior response is rejected on new grounds in a final action, the finality may be improper even if one or more other claims were amended so as to necessitate a rejection on new grounds.

2. Was any claim rejected over reference(s) submitted in an Information Disclosure Statement (IDS) filed after the mailing date of the preceding action?

If so, then the action's finality is likely proper regardless of whether or not the rejected claim(s) were amended in the immediately preceding filed response.

3. Was an applicant submission made satisfying the joint research agreement prior art exclusion under 35 U.S.C. § 103(c)?

If so, and the final action includes a new double patenting rejection in view of the satisfied requirements, then the action's finality is likely proper.

4. If the action immediately follows the filing of an RCE, could the action's rejections have been made prior to filing the RCE?

In other words, would finality have been proper prior to the filing of the RCE had the amendments been entered? If so, then the action's finality is likely proper. It is important to note, however, that finality is not proper when the "application contains material which was presented in the earlier application after final rejection or closing of prosecution but was denied entry because (A) new issues were raised that required further consideration and/or search, or (B) the issue of new matter was raised." MPEP § 706.07(b).

5. If the application is undergoing reexamination, does the final action include a rejection, on prior art not of record, of any claim amended to include limitations that the examiner should reasonably have been expected to be claimed?

If so, the finality of the action is likely improper. MPEP § 706.07(a) notes that this situation of improper finality arises in "very limited circumstances (e.g., where the examiner suggests how applicant can overcome a rejection under 35 U.S.C. § 112, second paragraph)."

6. If the application is undergoing reexamination, does the final action include a new ground of rejection necessitated by the amendments to 35 U.S.C. § 102(e) by the Intellectual Property and High Technology Technical Amendments Act of 2002?

In other words, is the new ground of rejection based on art available under (pre-AIA) § 102(e), namely art that was not published until after the U.S. filing date of the application? If so, then the action should not be final unless the new ground of rejection was necessitated by the applicant's amendment of the claims or by reference(s) submitted in an IDS filed after the mailing date of the preceding action.

If an action appears to have been improperly issued as a final action, an applicant can address the error in a variety of ways:

  • An informal approach involves directly contacting the examiner by telephone, explaining the error, and requesting that the action be withdrawn and reissued as a non-final action.
  • A less informal approach involves submitting a formal written response to the USPTO explaining the action's improper finality and requesting withdrawal of the action. This approach may expedite prosecution by allowing the examiner to consider any arguments and/or amendments also submitted in the written reply and to address the arguments and/or amendments as necessary in a newly issued action. However, if the applicant's arguments are not persuasive and the examiner maintains the action's finality, the applicant may be required to pay extension fees with a Notice of Appeal or an RCE to avoid abandonment of the application.
  • If neither of these approaches is successful or is not desirable for an applicant to attempt for any reason, an applicant can formally petition the action's finality under 37 CFR § 1.181. The petition process does not, however, toll the period for reply to the action and may necessitate payment of extension fees if the petition is denied and the final action is not withdrawn. Additionally, the petition is not guaranteed to be reviewed and acted upon within the six month period set for reply to a final action.

In reply to a final action, the application must be placed in final disposition (typically a Notice of Allowance, RCE, or a Notice of Appeal), which can incur considerable applicant expense and/or delay in prosecution. Applicants can thus be well served by evaluating the appropriateness of a final action to avoid these adverse outcomes if an action is improperly made final.

Originally published on May 20, 2014

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions