Treatment of US Patent Application Final OA

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Release time:2021-02-26

Q: In the US patent application, after receiving the final OA, if you want to continue to work hard for the final authorization, what are the options? What are the advantages and disadvantages of each? What is the appropriate situation for each response?

    A:

Meaning of RCE, CA, and CIP in the following table:

    RCE:Request for Continued Examination 继续审查请求

    CA:Continuing Application延续申请

    CIP:Continuing-in-part Application部分延续申请

     

Timing of final OA reply:

Within three months from the date of final OA document (no extension fee is required. Hereinafter referred to as the free defense period), or within six months from the date of final OA's issuance (an extension fee is required for the next three months), but not more than six months from the date of final OA's issuance, a new written reply shall be submitted as soon as possible to obtain authorization, or to obtain the examiner's opinion (Advisory Action, namely AA, A written response is required from the applicant within two months of receiving final OA to receive AA).

       

General principles:

After receiving final OA, reply within two months from the date of final OA. When replying to final OA, only the claim can be modified to meet the authorization conditions. Although this goal may also be achieved through argument, the risk is greater. In addition to deleting the claim or modifying it according to the recommendation of the examiner, the said modification cannot modify the claim to form a new unexamined technical solution (e. g. adding the features in the specification (not appearing in the claim) to the claim). If the examiner does not agree with the reasons in the applicant's reply, the examiner is responsible for issuing a document (advisory Action) reflecting the examiner's attitude and opinions within 30 days. The applicant can decide to reply to the advisory( CA/CIP) or give up the reply or mention RCE or Appeal according to the content of the advisory.

 

Processing method

 Applicable circumstances

 Advantages

 Disadvantages

 Precautions

Directly modified by the inspector's opinion

There is a prospect of authorization (if the examiner acknowledges that one or more claims have a prospect of authorization, but otherwise, there is no other patentable technical solution in the original application document)

Authorization can be obtained as soon as possible

The scope of protection granted may be small and affect the application or claim.

In addition to deleting the claim or modifying it according to the recommendation of the examiner, the claim cannot be modified to form a new unexamined technical solution (e. g. adding features in the specification (not appearing in the claim) to the claim)

RCE

There is a prospect of authorization (e. g., the examiner recognizes that one or more claims have a prospect of authorization, but in addition, there are other patentable technical solutions in the original application documents)

Claims can be rewritten; The applicant's request items added to the RCE, even if more than 20 items, will not receive any closing fee. The cost is less than that of CA and CIP. After submitting RCE, the applicant can directly enter the review stage, which is faster than that of CA or CIP.

An additional official fee is required; compared to the CA, there is only one patent right after authorization.

 

1. In the first applicable case, for the sake of insurance, the submitted RCE may include the claims with authorization prospects recognized by the examiner and the rewritten claims.

The RCE is a continuation of the original application and is only part of the original application. RCE is generally the end of the examiner's review, and the issuance of Final OA or the original application can be authorized, but it is submitted before the license fee has been paid.

3. Before the case is closed after final OA, the applicant may make multiple RCE requests if he or she deems it necessary.

If modified, the modified claim has the prospect of authorization, if not modified, the prospect of authorization is minimal

If the response to Final OA or AA is close to the legal deadline of 6 months, even if the response is sent within 6 months, the examiner will not be able to review it in 6 months, so that even if our changes can lead to authorization, the examiner will not be able to authorize it.

Reply to the final OA according to the review opinion, raise the CA at the same time, and submit the rewritten claim in the CA.

There is a prospect of authorization (e. g., the examiner recognizes that one or more claims have a prospect of authorization, but in addition, there are other patentable technical solutions in the original application documents)

Can be authorized as soon as possible, at the same time, if the CA can be authorized, will get two patents

CA is equivalent to another application and fees are paid according to the new application; review cycle is longer

1. CA does not have to wait until the examiner issues Final OA, as long as the original application is pending.

2. CA is identical to the disclosure of the original application. The CA specification cannot add new content, and the claims may be different from the original application, but they must involve the same subject matter as the claims of the original application. The purpose of proposing a CA is generally to apply for a scope of protection that is different from the claims of the original application. CA is entitled to the filing date of the original application.

To reply directly to Final OA, you can state your reasons in a different way of thinking and angle.

Even if amended, the claims have no prospect of authorization.

A chance to argue; no official fee for responding to final OA

Examiners are more difficult to accept the reasons for reply in final OA; there is little prospect of authorization.

 

 提Appeal

Even if amended, the claims have no prospect of authorization. If you reply to Final OA within two months, if you are still rejected after receiving AA, if the agent thinks that the reason for the reply is sufficient or the examiner has indeed made a mistake, you can request to Pre-appeal brief conference first, and then decide whether to mention Appeal according to the opinions of the review team.

Pre-appeal the review team in the brief conference is composed of three people, it can be reviewed by another reviewer. Compared with RCE, the bias of the original reviewer is easier to correct. There is no official fee for making a request to Pre-appeal a brief conference, but there is still a fee for Notice of Appeal.

Inability to modify the specification or claims, costly; time-consuming

appeal is submitted no later than six months from the date of Final OA (including three months after which the extension fee is submitted). After July 2005, the applicant can put forward Pre-appeal brief conference(Pre-appeal brief conference is that the three-person review panel (the panel) checks the final OA of the examiner before the applicant puts forward the appeal brief. When the review panel (the panel) finds that it is not necessary to put forward the appeal, it can help the applicant save the time and cost of preparing the appeal brief). Specific operations are as follows:

Notice of Appeal and payment can be submitted first, and a request to start the Pre-Appeal conference and a Pre-Appeal brief can be submitted at the same time as the notice of appeal (the length of the Pre-Appeal brief should not exceed 5 pages, and the focus of the discussion should be on the examiner's mistakes that the applicant thinks); The USPTO must make a decision within 45 days after receiving the request to Pre-appeal the brief conference (thus helping the applicant save time), there are four possible decisions:

1. The application continues with the petition procedure (Application remains under appeal) -that is, the Appeal procedure is initiated.

2. Restart the dispute procedure (Prosecution is reopened) -that is, the original examiner restarts the review procedure (after the dispute procedure is initiated, the application may be approved directly)

3. Approval of the application (Application is allowed) -I .e. authorization.

4. The request of this pre-appeal violates the regulations, so the request will not be considered (Request is noncompliant and is dismissed)

If the decision is the first case, the applicant needs to submit an Appeal Brief (similar to a arguments) within 1 month from the issuance of the decision, which is determined by the appeal board.

If the response to Final OA or AA is close to the legal deadline of 6 months, even if the response is sent within 6 months, the examiner will not be able to review it in 6 months, so that even if our changes can lead to authorization, the examiner will not be able to authorize it.

In this case, not only should a certain extension fee be paid according to the length of time, sufficient extension should be purchased, but also Notice of Appeal and Appeal Fee should be paid.

CIP, add new content to CIP, and write claims for the new content

Even if amended, the claim has no prospect of authorization.

Improvements made on the basis of the original application after the application date of the original application can be added to the CIP;

Features not disclosed in the original application may be added as well as claims of the application differing from the original application.

The term of the patent right shall be 20 years from the filing date of the original application (parent case).

 

1. CIP does not have to wait until the examiner issues Final OA, as long as the original application is pending.

2. CIP can have two valid application dates, one is the application date of the original public content (I .e. the application date of the original application), and the other is the application date of the new added content. The application date of the original public content and the new added part are calculated separately, but the patent right period is 20 years from the application date of the original public content.

Inadequate disclosure of original application

Request for extension of response period

The examiner made amendments to the application document ex officio in the AA and stated that the authorization could be given with the amended text. In this case, it depends on when the AA is issued. If the free defense period has passed when the AA is issued, a certain extension fee shall be paid according to the length of time (up to six months from the issuance of final OA), and sufficient extension shall be purchased to enable the examiner's amendment to take effect.

Authorization can be obtained as soon as possible after replying to AA

Deferral Fee Required

Whether it is a reply to Final OA or AA, if it is a reply after the free reply period of final OA, an extension fee is required.

The examiner says in the AA that it can be authorized with certain modifications. In this case, if the free defense period has passed when the AA is issued, a certain extension fee will be paid according to the length of time, sufficient extension will be purchased, and amendments will be made according to the examiner's opinion.