4 Key Points of Final Opinion of US Patent Application (Final OA)

As more and more Chinese enterprises participate in international competition, Chinese enterprises pay more and more attention to the protection of intellectual property rights overseas. Among them, the United States, as the world's largest economy, has become the first choice for many Chinese applicants to apply for overseas patents.

Compared with China, Europe, Japan and other countries, the U.S. patent examination system has its own uniqueness, one of which lies in its "Final Office Action" (hereinafter referred to as Final OA) and "Request for Re-examination" (Request for Continued Examination, hereinafter referred to as RCE) procedures.

Some people regard the US Final OA as China's notice of rejection decision, which is equivalent to the final review decision made by the Patent Office. This is actually a misunderstanding.

The "Final" here only means that the search and review fees paid before have been exhausted. Therefore, don't be discouraged by receiving Final OA with all claims refuted, especially since this is often only the second official review opinion! Unlike the State Intellectual Property Office of China, which issues three, four, or even six or seven notices of review opinions on a patent application, the issuance of Final OA during the second review is actually a normal situation in the U.S. patent review.

According to Nanjing Hua Xun's experience, only about 1/3 of the patent applications can receive more than two non-Final OA before Final OA. In addition, since amending the claims means that the examiner needs to search and review the new technical solution again, Final OA also means that the window for amending the claims has been closed. After receipt of Final OA, no further substantive changes to the claims can theoretically be made in the response.

Since Final OA indicates that the previous search and review fees have been exhausted, is it okay to pay the fees for the Patent Office to continue the review? The answer is yes.

By submitting the RCE request and paying the corresponding fee, the patent office's examination door is opened again, and the applicant can amend the claim again.

At present, the U.S. government has no limit on the number of RCE requests submitted, so in theory, as long as the applicant is willing, it can continue to request RCE, so that the patent office will continue to review. Therefore, there is no such thing as China's notice of rejection in the United States.

By understanding the above contents, we can find that the patent examination system of China and the United States is very different in procedure. For Final OA, we should not only understand its meaning, but also understand its relevant laws and regulations and how to deal with it.

(1)Final OA Response Period

The legal deadline for Final OA responses is generally three months from the date of publication, and there is a key point in this period-two months from the date of publication. Another type of review opinion has to be mentioned here, that is, Advisory Action (translated as "proposal" or "advice letter", hereinafter referred to as Advisory), which is issued by the official at its discretion after the applicant replies to Final OA to inform the applicant that its reply has been considered by the examiner, but cannot authorize the patent application. The applicant can request review (Appeal) or make RCE request.

Officially, if the applicant's response to Final OA is submitted within 2 months and the examiner's Advisory is issued after the legal deadline for Final OA's response, the extension fee will be calculated from the date of the Advisory's submission, otherwise it will be calculated from the legal deadline for Final OA's response. Figures 1 and 2 reflect the differences caused by the response to Final OA at different time periods.

As can be seen from the above two charts, although the reply (response) time in Figure 2 is only 2 days later than the reply time in Figure 1, and the Advisory post date is the same as that in Figure 1, due to the different starting date of the extension fee, the extension fee has been paid for 1 month (the official fee is 200 US dollars)! From this, you can see that it is very important to reply within 2 months from the date of Final OA!

It should be said that this is generally the case, but if you reply late, the examiner's review will be delayed accordingly, although in most cases the examiner will try to issue the next official document within the 3-month legal limit, but does not rule out the overdue situation.

At this time, the applicant needs to pay the extension fee at the same time regardless of the subsequent actions.

Therefore, Nanjing Hua Xun's suggestion is that for Final OA, the sooner the reply is, the better. It can give the examiner full consideration time. Even if the reply is not accepted, the applicant will have time to decide what to do next because the Advisory comes down early. As can be seen from Figure 3 below, an early response to Final OA can secure half a month or even more than a month of Advisory response time (no extension fee).

(2)Final OA Response Requirements

As mentioned above, Final OA means that the window for amending claims has been closed. In response to Final OA, the applicant can only delete the claim or modify the claim to overcome formal problems. The judgment standard is that new problems (raising new issue) cannot be caused, and the examiner can consider whether the claim can be authorized without searching. For the judgment of whether to cause new problems, the grasp of the yardstick lies in the examiner. Nanjing Huaxun has both the experience of being rejected for formal modification according to the examiner's requirements in the Final stage, and the experience of actively modifying and being accepted by the examiner.

Once the amendment claim is rejected by the examiner, the corresponding reply reason will not be considered by the examiner, so it is extremely risky to amend the claim in the Final stage.

Nanjing Hua Xun's suggestion is to argue only against the review opinions and not to amend the claims as much as possible.

(3) Response to Final OA

From the above introduction, one may think that since the final stage cannot modify the claims, and if the response is not considered, it is possible to directly submit the RCE after receiving the final OA. Before answering this question, we first need to understand the relevant provisions of the RCE and other responses to the final OA.

The setting of RCE is intended to enable the examiner to review the unexamined technical solution. Therefore, at least one of the claims submitted at the same time as the RCE request should be new or modify the unconsidered claim. If only the claims rejected by Final OA are submitted without modification, even if RCE is mentioned, the examiner has the right to issue Final OA again.

Therefore, the applicant should submit an RCE request only for the need to modify the claim, that is to say, the examiner and the applicant agree on the issue that the current claim cannot be authorized.

However, there is also a situation where the applicant and the examiner disagree on whether the current claims can be authorized, that is, the applicant believes that the claims that are not amended are patentable, and this situation is not suitable for submitting RCE.

In view of this situation, in addition to the above-mentioned reply to Final OA, the applicant can also carry out appeal (Appeal) or pre-appeal pre-trial (Pre-Appeal), which is different from the same examiner when replying to Final OA. Both Appeal and Pre-Appeal have higher-level examiners participating, which is somewhat similar to China's request for review from the review board. Because it is a pre-appeal pre-trial, the Pre-Appeal requires that the applicant's response should not exceed five pages.

In order to speed up the examination, the patent office has also introduced some experimental projects to allow applicants to make limited amendments to their claims when RCE is not filed, including After Final Consideration Pilot (AFCP) 2.0 and Post-Prosecution Pilot Program (P3). Patent applications requesting these two items are required to make restrictive amendments to the independent items at the same time as the response. The Patent Office allows the examiner to search for the new technical solution within a certain period of time (usually 4 hours).

However, if the Inspector considers that the modification makes it impossible to complete the search within a limited time, he still has the right not to accept the applicant's modification, at which point the applicant may continue to submit an RCE so that the modification is officially accepted. AFCP can be regarded as Final OA with revised reply, and its review is still carried out by the examiner alone, while P3 can be regarded as Pre-Appeal with revised reply, and its review is carried out by a three-person review team. In addition, P3 may require oral review.

(4) Regarding the cost

Pre-Appeal and Appeal are required to pay an official fee of US $800, while AFCP and P3 are free of charge.

In addition, AFCP is a relatively long-term project, while P3 is only a short-term experimental project, which will only last until 2017.1.12 or request more than 1600 pieces. It is uncertain whether the government will continue this project after that.

The responses to the several Final OA mentioned above can be summarized as follows:

In short, there are various ways to deal with Final OA, which should be selected according to the actual situation. If you need to modify the claims, you can try to use AFCP first, and reply to Final OA should be carried out as soon as possible to buy time for other subsequent procedures.