What Happens to a Patent Application After A “Final Rejection”?

In the past, any response submitted to the US Patent Office after a Final Rejection was given very little consideration unless the examiner had previously indicated that certain subject matter in the claim was already “Allowable”. In almost all other instances, the examiner simply refuses to officially “enter” and “consider” the Response, saying either that it requires further searching or that it requires consideration of a new subject.

We have a bit of good news on that front. The US Patent Office recently announced that they have launched a new, internal pilot program entitled “After Final Consideration Pilot”. The stated purpose of the program was stated as:

“To advance the goal of compact prosecution, the following guidance is provided to highlight situations when entry of an Amendment After Final Rejection under 37 CFR 1.116(b) may lead to earlier allowance of the application without undue burden on the examiner or applicant. Once a final rejection that is not premature has been entered in an application, there is no right to unrestricted further prosecution. In limited situations further amendments or arguments may be considered.”

The new program provides the examiner with officially-creditable additional time to give further consideration to applicant submissions after the Final Rejection. The Patent Office memo announcing the new program explained:

“A full and complete review of a response includes any additional search required to determine whether or not proposed amendments distinguish over the prior art. Examiners should review responses under 37 CFR 1.116(b) and use their professional judgment to decide whether the nature and extent of the amendments or arguments presented in the response can be fully considered within the limited amount of time authorized by the After Final Consideration Pilot. If not, examiners should treat the response according to current practice, without non-production time authorized.

If the examiner determines that the response can be fully considered, including any additional search required, within 3 hours for plant and utility applications or 1 hour for design applications, that amount of non-production time is available whether or not the consideration of the amendment results in allowance of the application”.

The new guidance even suggests that the examiner can use some of the allotted 3 hours for conducting an interview with the Applicant in the following phrasing, taken from the memo:

“If an interview is conducted as a result of consideration of the after final response”

This is a substantial change in the way Responses are to be handled after the examiner has issued a Final Rejection. Examiners are graded on the “credits” they earn based on how many applications they “dispose of”. Previously, the examiner received no “official credit” for any work done after a Final Rejection, so we were totally at the examiner’s mercy and any good relationship we might have built up with a particular examiner in a particular case, which is especially difficult when there is no previously existing relationship with a particular examiner. And there are thousands of examiners.

With this change in Patent Office procedure, the examiner may actually be motivated by his employer, the Patent Office, to deal with a post-Final Rejection response.

Post Final Rejection Responses have always been an official procedure available to the applicant. However, there has never been any motivation for an examiner to give these responses any real consideration. Now it appears that there may be a bit of official recognition that the examiner needs to deal with these responses rather than forcing us/the Applicant to use the other, more costly procedure which is the “Request for Continued Examination”. If the examiner fully considers our response after a Final Rejection, we get fairly prompt feedback. If we have to use the Request for Continued Examination instead, the examiner is allowed to put that “Request” on the back burner for a long time, which historically has been more than a year in some instances.

Good news! – Responses after Final may now get some real consideration. But keep in mind this only a pilot program. Stay tuned as we see how this plays out.

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