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Consider the following case:

A nice examiner files final rejection but allows a post rejection interview and during the interview suggests how to amend claims for allowance and also suggests to file after final response.

Questions:

  1. How to file after final response and in what format?
  2. What can be included in after final?
  3. Do you know any examples (patent numbers) of patents with after final prosecution.
  4. Are there any special pitfalls of after final prosecution(except those that already apply to normal patent prosecution).
  • 1
    It's a good question. Many, many patents have final rejections on their way to issuance. – Eric Shain Dec 23 '19 at 22:38
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"suggests how to amend claims for allowance"

If examiner suggested any specific amendment(s) to your claim(s) to put your claims in condition of allowance and has asked you to send response to final rejection then you should be a relieved man, you are almost through. If that "how to" was just academic, then all the niceties were of 'Null' utility to you.

1. How to file after final response and in what format?

Format and method for filing response to final office action from USPTO is same as the format for response and method for filing response followed by you for filing response to non-final office action.

Only this time you ought to mention (i) it is a response to final office action, (ii) provide summary of interview with examiner, (iii) mention if you are following examiner's suggestions for claim amendment to put claims in condition of allowance and (iv) restrict your amendments to examiner's suggestion and/or limitations laid down by 37 CFR 1.116(b) Ref-1.

In the absence of specific suggestion for amendment to claims to put them in condition of allowance and amendments not conforming to limits of 37 CFR 1.116(b) mentioned above, I think, RCE is the option to go for with your amendments.

2. What can be included in after final?

Excerpt from MPEP 714.13 : Ref-2

Except where an amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner, compliance with the requirement of a showing under 37 CFR 1.116(b)(3) is expected in all amendments after final rejection.

3. Do you know any examples (patent numbers) of patents with after final prosecution?

I would rather suggest a method. Go to PublicPair Ref-3. Enter any application number pre or post to your application number. Look at 'Image file wrapper'. Most likely you will hit desired result.

4. Are there any special pitfalls of after final prosecution(except those that already apply to normal patent prosecution)?

See answer to 2 above. Bonus expected is 'examiner deciding to enter your amendment of claims for catering to appeal issues without allowing your claims' which may introduce new matter for new search and new objections during RCE or such future prosecution actions.

Kindly take note : Please don't consider it as legal advice. If your purse permits, it is always advisable to take legal advice from qualified professional.

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After reading the comment of George White I found that the AFTER FINAL CONSIDERATION PILOT PROGRAM 2.0 gives the applicant additional flexibility beyond the limitations stated in the CFR 1.116(b) and these include:

  1. The amendment places the application in condition for allowance by canceling claims or complying with formal requirement(s) in response to objection(s) made in the final office action.

  2. The amendment places the application in condition for allowance by rewriting objected-to claims in independent form.

  3. The amendment places the application in condition for allowance by incorporating limitations from objected-to claims into independent claims, if the new claim can be determined to be allowable with only a limited amount of further consideration or search.

  4. The amendment can be determined to place the application in condition for allowance with only a limited amount of further search or consideration, even if new claims are added without cancelling a corresponding number of finally rejected claims.

  5. The amendment can be determined to place the application in condition for allowance by adding new limitation(s) which require only a limited amount of further consideration or search.

  6. The response comprises a perfected 37 CFR 1.131 or 37 CFR 1.132 affidavit or declaration (i.e. a new declaration which corrects formal defects noted in a prior affidavit or declaration) which can be determined to place the application in condition for allowance with only a limited amount of further search or consideration.

The AFCP 2.0 has been extended through September 30, 2020. https://www.uspto.gov/patent/initiatives/after-final-consideration-pilot-20

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