The document discusses various options for applicants to pursue after receiving a final rejection from the patent examiner at the USPTO. These options include filing a response after final rejection with arguments and potential amendments, participating in the After Final Consideration Pilot Program 2.0, filing a Request for Continued Examination along with a submission, requesting a Pre-Appeal Brief Conference, or filing an appeal. It provides details on the procedures, requirements, and potential outcomes of each option.

1. Overview on After Final Practice
at the USPTO
Presented by Justin J. Cassell
February 2017
© 2017 Workman Nydegger

2. • A Final Rejection is intended to close prosecution of
the application on second or any subsequent
examination or consideration by Examiner.
• But wait:
– While a Final Office Action may appear to be the end of
prosecution, it may not necessarily be the end of the
line.
• Instead:
– The USPTO offers a few options to address the final
rejection or reopen the prosecution of the application.
– Various factors to consider including Examiner
motivation, timing, components of request and
decisions by the USPTO.
Response After Final Rejection:
When is a Final Rejection Proper?

3. Options in Responding After a Final
Office Action
• Response after Final Office Action
• After Final Consideration Pilot Program (AFCP)
• Request for Continued Examination (RCE) with
submission
• Notice of Appeal and Pre-Appeal Brief
Conference
• Appeal
• Continuation or Continuation-in-part application
• Abandonment

4. Response After Final Rejection:
How much time is an Examiner allocated?
• It is important to consider how much time an Examiner has
allocated for different stages – this may influence Examiner
behavior after a Final Office Action.
• Examiners must obtain 8 counts (accounting for 80 hours) every
two weeks (bi-week) – may be offset.
• Weight is placed on first Office Action.
• Basic formula: 2.0 counts for balanced disposal (1.25 for first OA +
0.25 for final OA + 0.5 for a disposal).
• Formula diminishes for each RCE.
Stage 0 RCE 1 RCE 2 RCE
Non-final OA 1.25 1.00 0.75
Final OA 0.25 0.25 0.25
RCE (disposal) 0.50 0.50 0.50
Examiner’s Answer (disposal) 0.50 0.50 0.50
Abandonment (disposal) 0.50 0.50 0.50
Allowance (disposal) 0.50 0.50 0.50

5. Response After Final Rejection:
How much time is an Examiner allocated?
• No counts:
– 2nd and consecutive Non-final
– Final Office Action
– Advisory Action
• Extra time to reduce count requirement
– Restriction requirement: 1 hour
– AFCP 2.0 Advisory Action: 3 hours
– Appeal Conference: 1 hour
– Interview: 1 hour
• Examiners are incentivized to dispose of an application
early – example of allowance after First Office Action.
– Examiner will receive credit for a writing a Final Office Action
and a disposal (allowance) – 0.75 counts.

6. • A patent examiner may issue a Final Office Action when:
– Previous arguments are unpersuasive; OR
– A new ground of rejection is required by amendments made to
the claims in the previous response; OR
– A new ground of rejection is required by a reference in an
information disclosure statement submitted after the first action.
• On first action if:
– Application is continuation of or substitute (previous filing of RCE)
for earlier application AND
– All claims are (1) drawn to same invention claimed in earlier
application AND (2) would have been properly finally rejected on
grounds or art of record in next Office Action if had been entered
in an earlier application.
Response After Final Rejection:
When is a Final Rejection Proper?

7. Response After Final Rejection:
Applicant Options and USPTO Results
• Applicant Options for the Response:
– Request for Reconsideration.
– Interview (note: Interview is at Examiner’s discretion – may
deny request for interview – Examiner given extra time – 1
hour).
– Claim amendment.
• USPTO Response to the Response:
– Allow application or certain claims.
– Allows Examiner time to consider response.
– If response does not place the application in condition for
allowance, the Examiner may issue an Advisory Action,
whereby:
• Examiner provides reasons for not allowing claims.
• Evaluate claim amendment entry and grounds for entry or
non-entry.

8. • Office Action gives Applicant 3 months from mailing date of
Final Action to file a response – “Shortened Statutory Period
for reply” (SSP).
• But SSP expires on mailing date of Advisory Action if:
– (1) Reply filed within 2 months of mailing date (expedited
handling) of Final Action AND (2) Advisory Action not mailed
until after end of 3 months from mailing date of Final Action.
• No later than 6 months from mailing date of Final Action –
“Statutory Period for Reply” (SP).
– Replies filed after expiration of SSP will require payment of
extension fees.
– Period for reply cannot be extended beyond SP – in other
words, 6 months from mailing date of final Office Action.
– Filing only Response does not stop SP for reply.
• Replies that stop the running of the Statutory Period:
– Filing of a Notice of Appeal.
– Filing of a Request for Continued Examination.
Response After Final Rejection:
When to File Reply to Final Rejection?

9. Response After Final Rejection:
Advisory Action Timelines
Example 1
January 1
Final Rejection
Mailed
March 1
After-final response
filed
(within two months
of mailing date)
May 15
Advisory Action
Mailed
May 15-June 15
Only one month
extension of time
required with RCE
O mo. 1 mo. 2 mo. 3 mo. 4 mo. 5 mo. 6 mo.
July 1
Expiry of
SP
April 1
Expiry of
SSP
Example - Reply filed within 2 months of mailing date of Final Action
It is recommended to take advantage of filing within 2 months of mailing
date of Final Office Action to reduce expenses.

10. Response After Final Rejection:
Advisory Action Timelines
Example 2 – Reply filed after 2 months from mailing date of Final Action
January 1
Final Rejection
Mailed
March 2
After-final
response filed
(more than two
months after
mailing date)
May 15
Advisory Action
Mailed
June 2
three month
extension of time
required with
RCE
O mo. 1 mo. 2 mo. 3 mo. 4 mo. 5 mo. 6 mo.
July 1
Expiry of
SP
April 1
Expiry of
SSP

11. Response After Final Rejection:
Advisory Action Timelines
Example 3 – Reply filed after 3 months (SSP) from mailing date of Final Action
January 1
Final Rejection
Mailed
April 1
After-final
response filed
(more than two
months of mailing
date)
April 15
Advisory Action
Mailed
May 1
Two month
extension of time
required with
RCE
O mo. 1 mo. 2 mo. 3 mo. 4 mo. 5 mo. 6 mo.
July 1
Expiry of
SP
April 1
Expiry of
SSP

12. • What can response include: Applicant Actions.
– Includes a writing pointing out Examiner’s errors.
– May include an amendment according to limited scope.
– Must be filed within six months of the date of the Final
Rejection and prior to filing Notice of Appeal.
• Does not toll or stop statutory period.
• How is response considered by the Examiner?
– The Examiner will reconsider the application with
respect to the response and either allow the application
or notify the applicant of deficiencies that still exist
(Advisory Action).
Response After Final Rejection:
What Can the Response Include?

13. Response After Final Rejection:
What May Be Amended After Final?
• File an Amendment and Response After Final under 37
C.F.R. § 1.116.
– To comply with Examiner’s suggestions.
– To reduce issues on appeal i.e., cancel claims.
– To present claims in better form for consideration on
appeal.
– If they raise new issues of patentability, the Examiner will
likely refuse to enter them.
• Examiner will either enter the amendment in its entirety
or explain reasons for not entering the amendment.
• Examiner may enter amendment only for purposes of
appeal.

14. Final
Rejection
• Amendments of
claims compliant
with 37 CFR
§1.116
• Writing pointing out
Examiner’s errors
• No fee unless
extension of time
required
Office Decision Applicant Options
Possible Results
Advisory Action
Allowance
Be mindful of when amendment and/or response is filed relative to mailing date of Final Office Action.
If within 2 months, different determination of SSP for advisory action - mailing date of Advisory Action
- if after initial 3 month SSP.
Statutory period (SP) continues when response filed – 6 month maximum.
Unless proposed
amendment
entered in its
entirety, Examiner
will briefly explain
the reasons for not
entering the
proposed
amendment
Response After Final Rejection

15. • When can it be filed: Claims must be finally rejected.
• Procedure: Applicant submits –
– Request to participate in AFCP 2.0.
– Statement of availability for interview.
– Non-broadening amendment to at least one
independent claim.
– No fee for filing request.
After Final Consideration Pilot Program
2.0 (AFCP 2.0)

16. • Effect: Authorizes additional time for examiners to
search and/or consider responses after final rejection.
– If Examiner can complete any necessary search in
limited time, will consider Amendment.
– If Examiner cannot complete search in time, Examiner
rejects AFCP request and treats amendment as a
request for reconsideration.
– Examiner may schedule interview with applicant
whether or not amendment places in condition for
allowance.
– An RCE may still be required for entry of amendment,
but the AFCP may provide insight to eventual allowance
after filing amendment with RCE.
After Final Consideration Pilot Program
2.0 (AFCP 2.0)

17. Final
Rejection
• Application allowed
• If not allowed,
Examiner may
schedule interview
with applicant to
discuss the
amendment
If additional search is
required but cannot be
completed in allotted time (3
hrs), treated as Request for
Reconsideration
If additional search required
AND can be completed in
allotted time, Examiner will
search and consider whether
amendment places in
condition for allowance If applicant not available for
interview within 10 days of
contact, treated as Request
for Reconsideration
Office Decision Applicant Actions Result(s)Office Procedure
If no additional search
required, Examiner will
consider whether
amendment places in
condition for allowance
• Request to
participate in
AFCP 2.0
• Statement of
availability for
interview
• Non-
broadening
amendment to
at least one
independent
claim
• No fee for filing
request
After Final Consideration Pilot Program
2.0 (AFCP 2.0)
Be mindful of when AFCP 2.0 and response are filed.
Same timeline applies as a Response after Final.
Statutory period (SP) continues when AFCP 2.0 request and response filed – 6 month maximum.

18. • When can it be filed: When prosecution is closed.
• Procedure:
– Payment of fee AND
– Submission which may include:
• Information Disclosure Statement (IDS), amendments to
written description, claims, or drawings, new arguments,
or new evidence in support of patentability.
• Effect: If timely filed, finality withdrawn and submission
will be entered and considered: prosecution reopened
• Fees: Higher fees for RCEs filed in an application after a
first RCE has been filed.
– First RCE: $1,200/600 USD (Large/small entity).
– Each subsequent RCE: $1,700 USD (Large/small entity).
Request for Continued Examination (RCE)

19. • If there is no submission with filing an RCE and fee, does
not stop 6 month statutory period.
• Not applicable to Design applications or patents under
Reexamination.
• Can be used to reopen prosecution after an issue fee is
paid along with filing a request to withdraw from issue
and a submission.
• Can be used to reopen prosecution during appeal or
after an appeal decision is issued along with a
submission.
• If new issues are not raised by amendment and
arguments – may result in a Final Office Action after
filing the RCE.
– May avoid Final Office Action after filing RCE by first filing
an amendment without a RCE to receive an Advisory
Action indicating amendment raises new issues.
Request for Continued Examination (RCE)
Additional Considerations

20. Final Rejection
• Payment of Fee per
§1.17(e) ($1,200/600
USD for Large/small
entity)
• Submission which may
include:
• IDS
• Amendments to
written description,
claims, or
drawings
• New arguments
• New evidence
If timely filed, finality
withdrawn and
Submission will be
entered and considered:
prosecution reopened
Office Decision Applicant Options Possible Results
Request for Continued Examination (RCE)
Request for continued examination (RCE) - 2nd and subsequent
request enhanced RCE fees ($1,700/850 USD large/small entity).
Consider filing a Request for Reconsideration and an RCE after receiving an
Advisory Action to avoid a first Final Office Action after filing the RCE.

21. • Purpose: Created to expedite prosecution by
reducing time and expense spent on appeal briefs.
• When can it be filed: When claims are twice or
finally rejected. Must file Notice of Appeal within
six months of final rejection (with extension of
time after SSP).
• Procedure:
– File Notice of Appeal (tolls SP).
– Request to participate in Pre-Appeal Brief Conference
Pilot Program.
– Summary of Arguments, filed at same time as Notice of
Appeal.
– Pay Notice of Appeal fee.
Pre-Appeal Brief Conference Pilot
Program

22. • Effect: Panel of examiners (often including Supervisor,
but at least two Primary Examiners) reviews the
summary and decides whether to reopen prosecution,
allow application, or keep under appeal.
– Panel has 45 days to render decision.
• Summary of Arguments may comprise arguing clear
errors in Examiner’s rejections or Examiner’s
omissions of essential elements needed for prima
facie rejection.
• Determine whether issues are technical or legal.
– If legal, ripe for appeal.
– If technical, may consider resolving before appeal.
• No supplemental requests or interviews.
Pre-Appeal Brief Conference Pilot
Program

23. Claims twice rejected
• Remains under Appeal
• Prosecution reopened
• Application allowed
Panel of Examiners
reviews Summary of
Arguments within 45 days
of request
• File Notice of Appeal
Fee per 37 CFR §41.20
($800/$400 USD
Large/small entity)
• Request to participate in Pre-
Appeal Brief Conference Pilot
Program, including
• Summary of Arguments (no
more than 5 pages) and filed
at same time as Notice of
Appeal
Office decision Applicant Actions /
Office Procedure
Result(s)
Pre-Appeal Brief Conference Pilot
Program

24. • Purpose: Appeal final rejection to Patent Trials and
Appeal Board (PTAB).
• When can it be filed: Once claims are twice rejected or
finally rejected. Must file Notice of Appeal within 6
months of final rejection (with extension of time after
SSP).
• Procedures:
– Notice of appeal no later than 6 months after final rejection.
– Applicant then files Appeal Brief.
– Examiner issues Examiner’s Answer.
– Applicant may file Reply Brief AND/OR
– Pay fee for sending Appeal to PTAB.
Appeal

25. • Effect: PTAB may affirm or reverse Examiner either in
entirety or in-part, or remand for further consideration by
Examiner.
• Cannot file Appeal with an RCE. Either one or the other.
• Appeal Brief is due later of:
– 1 month from mailing date of Decision of Pre-Appeal
Conference, OR
– 2 months from filing Notice of Appeal, extendable up to 5
more months.
• Request and fee sending Appeal Brief to PTAB due within
2 months of Examiner’s Answer (not extendable).
• Applicant’s Reply to Examiner’s Answer does not toll
period to send Appeal Brief to PTAB.
Appeal

26. • Amendment after Notice of Appeal may be
admitted if to cancel claims, comply with a
requirement, present claims in better condition for
appeal, or amend the claims and specification
upon a showing of good and sufficient reasons
amendment is necessary and was not previously
submitted.
• Amendment filed with or after an Appeal Brief are
entered at Examiner’s discretion and can only
include cancellation of claims or rewriting
dependent claims as independent claims.
Appeal

27. • File RCE to reopen
prosecution
• Applicant may request
rehearing within 2 months
of decision to present
new argument based
upon recent decisions or
new grounds of rejection
• Appeal to Federal Circuit
Claims twice
rejected
Notice of Appeal within 6 months of
final rejection
• Fee per 37 CFR §41.20
($800/$400 USD Large/small
entity)
Appeal Brief within 2 months of
Notice of Appeal (SP within 7
months of Notice of Appeal)
• No fee for filing Appeal Brief
PTAB Decision
• Affirm or Reverse
Examiner Decision
(including new
grounds of rejection)
• May request briefing
or information
• May remand to
Examiner
Reply Brief by
Applicant within
2 months of
Written Answer
(not extendable)
Request for Oral
Hearing within 2
months of Written
Answer or Reply
Brief ($1,300/$650
USD Large/small
entity)
If remains under Appeal,
Examiner Written
Answer to Brief
(including new grounds
of rejection)
Office Decision Applicant Options/
Office Procedure
Possible Results
Appeal
• Remains under Appeal
• Prosecution reopened
• Application allowed
Send Appeal to PTAB with fee
($2,000/$1,000 USD Large/small entity)

28. • Purpose: To combine best aspects of AFCP 2.0
and Pre-Appeal Brief Conference Pilot Program.
• When can it be filed: Request must be submitted
within 2 months of final rejection and prior to
filing Notice of Appeal
• Procedure:
– Applicant submits arguments and proposed non-
broadening amendments to claims.
– Examiner schedules conference with applicant and
panel of examiners within 10 days of initial contact.
– Applicant makes 20 minute presentation to panel.
Post-Prosecution Pilot Program (P3)
(This program is only receiving requests in TC 1600: Biotechnology and
Organic Chemistry)

29. • Effect: Panel determines whether to reopen
prosecution, uphold rejection, or allow the
application.
• Fees: No fee associated with this program
• Additional Considerations:
– Program expired for all Technology Centers other
than TC 1600.
– Request cannot be filed if AFCP 2.0 or Pre-Appeal
Brief Conference request has been filed, and vice
versa
Post-Prosecution Pilot Program (P3)
(This program is only receiving requests in TC 1600: Biotechnology and
Organic Chemistry)

30. Final Rejection
• Final rejection upheld
• Application allowed
• Reopen Prosecution
(new Office action to
follow)
Office will contact applicant
to schedule P3 conference,
including a 20 minute
presentation to panel of
Examiners
Request must be submitted within 2
months of the final rejection AND prior
to filing Notice of Appeal
No Fee
Request to participate including:
• Arguments
• Proposed non-broadening
amendments to claims
• Statement of willingness to confer
Office Decision Applicant Actions /
Office Procedure
Result(s)
This program is no longer receiving requests in any Technology Centers (TCs)
except for TC 1600: Biotechnology and Organic Chemistry.
Post-Prosecution Pilot Program (P3)

31. • New continuing applications based on the current or
parent application.
• Continuation and divisional applications have the
same disclosure as parent application and share its
priority date.
– Do not require new declaration by inventor(s).
• All three types of applications restart the application
process for the new applications.
• Abandonment of the current application does not
abandon the new application.
• Current or parent application must be pending (i.e.,
extensions paid, if applicable) to claim priority in
subsequent continuing application.
Divisional, Continuation and
Continuation-in-part Applications

32. • Divisional application: A continuing application that is often
filed on the basis where there is a restriction requirement for
lack of unity of invention or species.
– If previously restricted invention or species properly claimed,
will not result in obviousness type double-patenting rejection.
• Continuation application: A continuing application
other than a divisional application.
– Different from an RCE since the continuation
application is a new application.
• Continuation-in-part (CIP): A CIP application adds
disclosure to the current application and does not share its
priority with respect to the additional disclosure.
– Requires new declaration by inventor(s) for new disclosure.
Divisional, Continuation and
Continuation-in-part Applications

33. • At any time, you may take no action and allow the
application to go abandoned or affirmatively abandon
the application.
• The USPTO does not charge a fee for abandoning an
application.
Abandonment