You filed your patent application. You waited 18 months and received a rejection. You called up your patent lawyer, and she explained to you how you are going to respond.
She drafted a response. You reviewed it, and it looks great! You are sure to get your patent now. About two months later, you are devastated. The examiner has issued a “FINAL REJECTION.” What do you do now? Is it over?
Unfortunately, this is a common scenario. In the U.S., almost all patent applications are rejected after they are examined. Many applications are rejected a second time. Most of these rejections are “final rejections,” which simply means that examiner does not have to accept any more responses to that rejection, as a matter of right.
Fortunately, you can still file a response. You should file it as soon as possible to give the examiner time to decide whether to enter the response into the record and, possibly, to allow the claims.
In many cases, you can have an interview with the examiner to discuss the rejection in more detail and to try to find a compromise that will result in an allowed claim. These interviews can be done over phone or via video conferencing. These interviews are very effective because it can help an examiner understand your point of view.
You can also file a Request for Continued Examination (RCE) to continue the examination process for a fee. Alternatively, you can file a new, continuation application that claims priority to your application, which will restart the examination process. The filing of a continuation application also requires a fee.
Lastly, you can appeal the examiner’s decision to the Patent Trial and Appeal Board. However, appeals typically take at least one year to resolve and require extensive briefing. As a result, appeals are usually the option of last resort.
The U.S. Patent and Trademark Office has developed a couple of pilot programs to encourage the submission of response after a Final Office Action and to fast track the appeal process. Clearly, a final rejection is not necessarily “final.”