Think Seriously About Avoiding Amendments After Final
Sometime the simplest and most straightforward
mechanisms are requested to be deconsructed so that others can see how they work. The
deconstruction also helps in thinking about the component parts thereof. One such
mechanism includes the filing of a request for continued prosecution after receiving a
final rejection in a case that you want to continue prosecuting.
Much of the reasons for this "nearly automatic" rule involve
the underlying rules which have been drafted to favor the time and credit of the
examiners. PTO rules allow the Examiners to "call" a case as "final"
after a response to a first office action (either absolute first action or a first action
in a new RCE cycle) if the "changes in the claims" "cause" a new or
different rejection which is made on final. Of course the new or different rejection
typically is not that different from the first rejection and in many cases is the same
rejection differing by only a few words. Right or wrong, this mechanism is used to make a
case final. One of the only ways to avoid even getting to this point in the prosecution is
to refrain from changing at least one independent claim (since a change to an independent
claim is considered to change all of the claims dependent thereon.
As I have traditionally understood it, Examiners earn a credit for a
first office action and another credit for a final office action. Thus if there are 10
actions between a first office action and a final office action, those are 10 actions for
which the Examiner doesn't get credit. Further, the time spent on those 10 actions
represents time that could have been employed earning points in other cases. The questions
presented here is as follows: "why just automatically file a RCE after a final
rejection rather than file an amendment after final when the applicant and the Examiner
are NOT close to agreement.
In essence the Examiner is saying that our last amendment caused him or
her to rise from their chair do a new or different search, make a new rejection and make
the case final. Assuming that the excuse for making the case final is legitimate, sending
in another amendment, (which amends claims), after final is a little like saying that he
is not saying the truth or in the alternative that you don't believe him . If the Examiner
is being truthful, then we compound things by saying "We want you to do more work
again, but we are not paying you". Then, we nurture anger in the Examiner, and the
Examiner MAY go out of his way later on to do a final rejection even when the applicant
don't deserve it. Put another way, he would be guaranteed to place the case into a
"NO" loop, and there is simply no reason to make him do it. This is the first
and perhaps best reason to simply file a request for continued examination (RCE).
Another good reason to simply file a request for continued examination
(RCE) is timing. If an amendment after final is answered past 2 months from the original
final office action mailing date, the PTO can sit on the case, and allow it to go
abandoned with no extension based upon any advisory action they may or may not prepare,
and which the applicant's representative may or may not receive. Even if you answer the
action after final, you are not much better off. The rules state that if you answer within
2 months of the action, the shortened period for response extends to and ends on the day
of the advisory action. This may no help much either. If the advisory is actually sent and
if you receive it within the 6 month statutory period, say it occurs at month 5, the
advisory action will (assuming 2 week delivery) enable a one month late fee if the filing
is done quickly in the time remaining in the month after the mailing date of the advisory
action. However, if the advisory action is after the 6 months, the PTO probably has no
discretion and the case will be abandoned. Even if this action is improper, who wants to
do a revival? Even IF the answer is within 2 months, there is nothing to prevent an
advisory action to come late and if it comes after the 6th month, again there is no
discretion, the pto cannot extend the 6 month date. So, in all cases the response to a
final rejection when the position of the Examiner and the position of the Applicant is not
very close, is dangerous, but a little less dangerous if an answer is made within 2 months
of the office action send date.
Third, where the final rejection is not specific, there is nothing that
should make an applicant or his representative think that there is any reasonable response
which could be made to cause the Examiner to say "you read my mind!, of course is
allowable" and then issue an allowance. After a final rejection, the general
probability of allowance based upon an amendment after final is extremely small. Sending
an amendment after final for something small and specific is reasonable, but not for a
generalized global "I see nothing allowable in this case" rejection.
Fourth, if the above is the case, and if the Examiner is not already
completely at war, an amendment after final can really help turn them against you. Given
the fact that after final rejection has a low probability of resulting in case allowance,
there is a significant chance of even further alienating the Examiner by making him
prepare an Advisory Action, a paper for which he receives no credit.
Fifth, what if a response is made after the two month period, and what
if an advisory action shows up 29 days before the 6 month abandonment date? Under this
circumstance, the government small entity late fee due would have been $555. This would
have been IN ADDITION TO the regular cost for an RCE (government fee $405). In essence,
you will have managed to further alienate the Examiner and it only cost you an additional
$555 to do it!! Job well done? I think not.
Sixth, the Examiner's after final rejection would have included NOT
ENTERING the amendment. The Examiner would likely have given a check box advisory and
would not have even read the action at all. If the applicant is interested in furthering
the case, taking a chance on extra fees and alienating the Examiner AND inviting the
Examiner NOT to read your latest amendment; what a deal.
Seventh, there is an increase probability of unintentional abandonment.
What if the advisory action refusal had been lost in the mail and we never saw it? Then
the case would go abandoned seemingly VERY QUICKLY. As it is now, a 6 month period does
not start again until a fresh substantive Examiner action. The problems associated with
abandonment are problems I want to avoid both in terms of cost, effort, and delay.
In summation, I consider a response to a final rejection which does not
include a RCE as very unusual. A client may think that it seems to save $405 in government
fees, but it does not. It COSTS much more than this fee. If an applicant think its a last
chance to wag a finger at the Examiner, or that the applicant is "giving the Examiner
another chance to do the right thing,' then forget it, its pure dream land stuff. I
have never filed a rejection response to a final without an RCE unless it was clear that
only or two clearly defined things needed to be done to satisfy the Examiner. Otherwise,
it is so unusual that it isn't done. Final Rejection is the most correct time to consider
continuing forward or not. Filing an Amendment After Final without an RCE has little
chance of gaining ground and a great chance of losing ground.
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