Prosecution immediately after the U.S. Patent Office has issued a final Office action is restricted. As soon as a final Office Action has issued, an Applicant is no longer entitled to further unrestricted prosecution on the merits, as a matter of proper. This is the result of the Office's policy of compact prosecution.
The restricted nature of after final practice has some not insignificant ramifications. For example, the amendments in an Amendment Soon after Final are essentially proposed adjustments to that application, except in limited circumstances. And, entry of those proposed alterations is frequently at the Examiner's discretion, with direction from Patent Office regulations and guidance from the Manual of Patent Examining Procedure (MPEP).
The Regulations and the MPEP
The regulations and the MPEP establish a conceptual hierarchy for the entry of right after final responses. Section 714.13 of the MPEP, entitled "Amendments and Other Replies Right after Final Rejection or Action," provides that except exactly where an amendment merely cancels claims, adopts examiner suggestions, removes difficulties for appeal, or in some other way calls for only a cursory review by the examiner, compliance with the requirement of a showing below 37 CFR §1.116(b)(3) is expected in all amendments following final rejection.
And, 37 CFR §1.116(b)(three) demands a showing of "superior and sufficient causes" why the amendment soon after final rejection is (1) crucial and (2) was not earlier presented. In this regard, the MPEP instructs that a "refusal to enter the proposed amendment need to not be arbitrary" and that it should be given "adequate consideration to figure out whether or not the claims are in condition for allowance and/or whether or not the problems on appeal are simplified." MPEP 714.13(II).
Portion (b) of 37 CFR §1.116, entitled "Amendments and affidavits or other evidence right after final action and prior to appeal" provides that
(b) Right after a final rejection or other final action ... in an application ... :
(1) An amendment may perhaps be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action
(two) An amendment presenting rejected claims in far better form for consideration on appeal might be admitted or
(3) An amendment touching the merits of the application or patent below reexamination could be admitted upon a showing of decent and adequate causes why the amendment is essential and was not earlier presented.
Sadly, neither the MPEP nor 37 CFR 1.116 supply any examples, standards, or other guidance as to what constitutes "superb and adequate factors." And, this is a important common. Indeed, the Patent Office's own electronic filing method (EFS-Web) tutorial wholly ignores the possibility of the existence of "superior and sufficient factors," advising that an Amendment Following Final "will not be entered if it demands an further search or far more than a cursory assessment."
Additionally, section 714.13 (II) of the MPEP instructs Examiners to advise an Applicant when: (1) specific portions of the amendment would be acceptable as placing some of the claims in better form for appeal or complying with objections or specifications as to form, if a separate paper were filed containing only such amendments and/or (2) proposed amendment(s) to some of the claims would render them allowable.
The Following Final Hierarchy
The foregoing regulations and MPEP guidance establishes the following hierarchy:
1. Responses Soon after Final that cancel claims or amend an application to address a formal requirement produced earlier (e.g., adopting Examiner suggestions) are entered as a matter of suitable. No showing of "great and sufficient reasons" is necessary.
2. Responses After Final that require only a cursory assessment by the Examiner (e.g ., removing difficulties for appeal or presenting rejected claims in much better form for appeal) could entered at the non-arbitrary discretion of Examiner with or with no a showing of "excellent and adequate reasons."
three. Responses Soon after Final that "touch on the merits" or otherwise do not demand "only a cursory review by the Examiner" (e.g., necessitating further search) may be entered at discretion of Examiner with a showing of "fine and adequate reasons."
In view of this hierarchy, it would appear to be a greater practice to prepare after final responses that appeal to the discretion of the Examiner, when they are not to be entered as a matter of suitable. Such responses would ideally reflect the restricted nature of right after final practice, satisfy the requirements of the relevant rules, and reflect the MPEP's guidance, so as to maximize the likelihood of entry.
Suggestions
The following are examples of recommended modifications tailored for right after final practice, such as some examples of paragraphs to look into including in soon after final responses to maximize the likelihood of their entry.
1. Acknowledge The Restricted Nature Of Following Final Practice And Ask The Examiner To Exercise His/Her Discretion To Enter Your Response
1 way to accomplish this might be to begin an following final response with a paragraph like the following:
In response to the final Office Action mailed April five, 2007, and having a period for response set to expire on July five, 2007, Applicant respectfully requests that the Examiner amend the present application in the manner set forth in this Amendment.
Or alternatively,
In response to the final Office Action mailed April five, 2007, and having a period for response set to expire on July 5, 2007, Applicant respectfully requests that the Examiner favorably look at the following remarks.
two. Establish Where A Reply Right after Final Rejection Should really Be Categorized In The Hierarchy And Expressly Clarify Why The Reply Should really Be Entered
For example, an Amendment Immediately after Final that addresses formal matters raised by an Examiner should be entered as a matter of right. So, an suitable explanation may well be:
Applicant submits that this Amendment Soon after Final Rejection only addresses formal matters raised a prior Workplace Action. Accordingly, Applicant is entitled to entry of this Amendment as a matter of correct below 37 C.F.R. §1.116 (b)(1).
When an Amendment arguably areas the application in superior form for appeal, an proper explanation may well be:
Applicant submits that this Amendment After Final Rejection at least areas this application in improved form for appeal. Applicant respectfully submits that this Amendment will need to only need a cursory assessment since the claim amendments presented herein do not add any new capabilities and/or do not considerably alter the scope of the claims. Consequently, the claim amendments need to not require any further search by the Examiner. This Amendment is necessary as it clarifies and/or narrows the troubles for consideration by the Board and was not earlier presented simply because Applicant believed that the prior response(s) placed this application in condition for allowance, for at least the causes set forth in those response(s). Accordingly, entry of the present Amendment, as an earnest try to advance prosecution and/or to minimize the quantity of problems, is requested below 37 C.F.R. §1.116.
When an Amendment touches on the merits, an appropriate explanation may well be:
Applicant submits that this Amendment After Final Rejection areas this application in condition for allowance by amending claims in manners that are believed to render all pending claims allowable more than the cited art and/or at least location this application in improved form for appeal. This Amendment is essential mainly because ... and was not earlier presented since Applicant believed that the prior response(s) placed this application in condition for allowance, for at least the factors discussed in those responses. Accordingly, entry of the present Amendment, as an earnest try to advance prosecution and/or to lessen the quantity of troubles, is requested below 37 C.F.R. §1.116.
Of course, this kind of paragraph will need to be modified to articulate the particular "superb and adequate" reason(s) distinct to a specific application.
three. Consist of An Express Request For The Precise Notice That MPEP §714.13 Instructs Examiners To Present An Applicant
For example
In the event that the Workplace declines to enter the present Amendment, and (i) any portion of the present Amendment would location some of the claims in greater form for appeal if a separate paper were filed containing only such amendments or (ii) any proposed amendment to any claim would render that claim allowable, Applicant respectfully requests that the Workplace inform Applicant of the same pursuant to MPEP §714.13.
4. File Right after Final Responses Electronically
Filing electronically avoids the delay among the time documents are received by the Patent Office and the time they are converted and placed into the image file wrapper (IFW). And, since time can be of the essence in soon after final practice, realizing a document has been received and is in the IFW can be a outstanding benefit. For example, if the after final reply is filed within two months of the date of the final Office Action, the shortened statutory period for response will expire either 3 months from the mailing date of the final rejection or on the date the advisory action is mailed, whichever is later. Nonetheless further, there are also patent term extension benefits to filing electronically, as I discussed here.
5. When Filing By Mail Or By Hand, Take Benefit Of The U.S. Patent Office's Expedited Process For Right after Final Responses
The Patent Office has an expedited processing procedure for processing paper responses after final rejection below 37 CFR 1.116. To take benefit of the expedited procedure, following final responses below 37 CFR 1.116 require to be marked as a "Reply under 37 CFR 1.116 - Expedited Process - Technologies Center (XXXX)" on the upper proper portion of the paper. Also, if the response is filed by mail, the envelope must be marked "Mail Quit AF" in the lower left hand corner. The markings preferably need to be written in a bright color with a felt point marker. If the reply is hand-carried to the Customer Window, the outside of the envelope should be marked "Reply Below 37 CFR 1.116 - Expedited Process - Technology Center (XXXX)." See MPEP 714.13(V).
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