Law360 Guest Article: USPTO's Final Rejection Of A Patent Isn't So Final

09/05/2013

A final U.S. Patent and Trademark Office action rejecting a patent application may appear to sound the death knell for your company’s patent application. Fortunately, in patent prosecution, as with many mistakes in life, “final” does not really mean “final” — you still have opportunities to “make amends” and overcome the problem in various ways.

A final action is usually the second action on the merits that an applicant receives from the U.S. Patent and Trademark Office. A patent examiner may issue such a final action when: (1) previous arguments are unpersuasive, (2) a new ground of rejection is required by amendments made to the claims in the previous response, or (3) a new ground of rejection is required by a reference in an information disclosure statement submitted after the first action.

We describe various tactics and strategies you can pursue even after a final action rejecting your application. These include interviewing with the examiner, appealing the application, filing an amendment after final, filing a request for continued examination, filing a continuation and/or making a filing under the After Final Consideration Pilot 2.0 program now in effect. Given all these options, it becomes quite clear that “final” is a bit misleading.

Excerpted from Law360, Septebmer 5, 2013. To view full article, click here (subscription required).

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