During prosecution of a patent application, applicant first receives a non-final rejection. Thereafter, a response is filed. If the examiner is not satisfied with the response, a final office action rejection is issued. A final office action rejection is a misnomer. This does not mean that a patent cannot be awarded. Rather, it means that the Examiner has completed the required steps he or she is required to do by law. In other words, prosecution of the patent application is deemed close unless applicant undertakes one of the following affirmative steps:
First option: applicant can appeal the matter.
Second option: applicant can reopen prosecution by filing a request to continue examination (RCE) with the requisite fee.
Third option: applicant can request prosecution be reopened under the After-Final Consideration Program (AFCP) 2.0. Under the AFCP 2.0, applicant must file a response that includes an amendment to at least one independent claim that does not broaden the scope of the claim. If the examiner believes the amendments overcome the rejection, the examiner would issue an allowance. If not, the examiner will issue an advisory action asking the applicant to avail either option 1 or option 2 above. However, applicant should note that filing a response under AFCP does not toll time to otherwise avail options 1 or 2.
To summarize, a final rejection does not necessarily mean that the invention cannot be patented. It means that the examiner has completed the process required by law after which applicant needs to undertake affirmative actions to continue prosecution of the patent application. As a reminder, the complete process to patent application can be read here.
Originally published at www.clfip.com on September 18, 2019.