How to Manage Final Office Actions and Responses and RCE Practice

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2 How to Manage Final Office Actions and Responses and RCE Practice

3 How to Manage Final Office Actions and Responses and RCE Practice Presenters: Ann McCrackin, President, Black Hills IP, LLC Peter Rebuffoni, Manager of Legal Operations, Schwegman Lundberg & Woessner, P.A. Tim Grathwol, Principal, Schwegman Lundberg & Woessner, P.A. and Adjunct/Affiliated Professor at Mitchell Hamline School of Law

4 Where does a USPTO Final Rejection occur in the prosecution process? A typical patent prosecution cycle includes the following basic steps: Application is filed A restriction requirement may be issued A pre-examination interview may be conducted If all claims are allowed, the application will obtain a notice of allowance If application not allowed, a first non-final rejection is issued, indicating if any claims are allowed, and providing a basis for any rejections Following a non-final rejection, an examiner interview may be taken, if any claims are rejected and applicant seeks to conduct an interview Following the interview, or if none is taken, a response to the non-final rejection is filed After considering the response to the non-final rejection, the application is either allowed, or a final rejection is issued by the examiner

5 What are requirements when a USPTO Final Rejection is received? Once a final rejection is received, the application will go abandoned unless one of the following occurs before the six month deadline: The application is continued by filing of a request for continued examination (RCE) The application is allowed The application is appealed Even if the application is allowed to go abandoned, the claims of the application could be pursued using a Rule 60 continuation filed with co-pendency This must be filed before application goes into extension, or the application extended for the purpose of filing the Rule 60 application If none of the above occur, the application will go abandoned, with no right to continue pursuit of disclosed subject matter

6 What are optional actions that can be taken when a USPTO Final Rejection is received? An after-final interview can be sought to negotiate allowable subject matter to place case in condition for allowance An after-final amendment/response can be filed to amend claims to place in condition for allowance or improve the application for an appeal But, an examiner is not required to give an interview or consider an after final amendment The applicant may reach an agreement with the examiner to allow the application subject to the filing of an RCE and an accompanying amendment AFCP 2.0 Request filed with amendment, providing additional (limited) time for Examiner to consider amendments and perform searching File RCE in otherwise allowable application to have prior art considered File Notice of Appeal

7 What are typical docketing requirements for a USPTO Final Rejection? The core docketing requirement for a final rejection is a: Three, four, five and six month deadlines to file an RCE or appeal, if a notice of allowance has not been obtained. Typical additional docket dates are: One month docket date to review for any prior art newly received or not not cited Docketing in other related files to cite art cited in final rejection One month (or two month) date (one month from final rejection) to consider an interview or file an after-final amendment File Notice of Appeal (either with response, by itself, with preappeal brief request for review) File RCE

8 Example Docketing Entries for Final Rejection 2 months Final Office Action Response Due - 2 month Pre-Appeal Brief Due - 2 month (reminder) Notice of Appeal Due - 2 month (reminder) 3 months Final Office Action Response Due - 3 month Pre-Appeal Brief Due - 3 month (Due Date) Notice of Appeal Due - 3 month (Due Date) 4-5 months Same as 3-months 6 months Final Office Action Response Due - Final Deadline Pre-Appeal Brief Due - Final Deadline (final date) Notice of Appeal Due - Final Deadline (final date)

9 What is typical Law Firm workflow docketing requirements for a USPTO Final Rejection? The typical workflow docketing of law firm for a final rejection are: Report of rejection to client/counsel Administrative tasks put on staff docket Substantive analysis on attorney docket Report sent/assembled according to docketed process Call/meeting with client to discuss options, or receive written instructions from client Prepare response or appeal or abandon

10 What is typical corporate in-house IP department workflow docketing requirements for a USPTO Final Rejection? The typical workflow docketing of a client/corporation for a final rejection are: Receive report of rejection from PTO or law firm Call/meeting with law firm to discuss options, or provide written instructions to law firm OR Call/meeting with inside executives to discuss options Determine budget constraints After decision, update budget projections with any expenses authorized Delegate/authorize and/or Prepare response or appeal or abandon

11 What are examples of reports provided to inhouse counsel by outside counsel? Example of written report (such as a memo or standard form document): Basic identifying information about the matter Listing of prosecution history Listing of related family members (along with status) Summary of current rejections Listing of currently pending claims Detailed recommendation by attorney/agent for providing claim amendments and response argument strategy in view of rejections As an alternative, the written report could be a spreadsheet providing all/some of the information mentioned above. These reports are commonly used during telephonic prosecution meetings to guide conversation. Screen sharing programs such as Zoom, Skype, or GoToMeeting can be used to share screens back and forth and present more detailed information, figures, etc. for discussion.

12 What are examples of strategic considerations for continuing pursuit of application? Breadth of claims possible Product coverage for client s products, for example to preclude copying Potential or actual ability to cover competitor products for licensing purposes Other considerations Design-around possibilities to build a fence/wall of protection around the technology Maintaining pendency of application in view of current or future litigation with competitor to keep opportunity to draft targeted claims or leverage during negotiations information about currently unclaimed but potentially valuable features disclosed in spec

13 Important information to feed back to prosecution counsel Information about clients product design and product plans Information about competitor product design or direction other?

14 Example Law Firm Checklist for Receipt of Final Office Action Verify that the action is FINAL Office Action Summary page includes a check mark in box 2a ( This action is FINAL ) Examiner Conclusion paragraph includes an indication that this action is made final and sets forth that shortened statutory period for responding and also noting period for responding to an advisory action Verify that the correct period for response (2 months) is noted in your docketing database If application was Track 1 (prioritized examination), a final office action removes the application from Track 1. Any docketing or expedited procedures you have in place for flagging Track 1 applications no longer apply. Verify whether any references/prior art in file still need to be cited to the patent office in an IDS/SIDS

15 Example Law Firm Checklist for Response to Final Office Action Confirm that the version of the draft being filed is the final version and that all response pages and associated documents are present Confirm that all fees are being paid and deposit account authorization for any additional fees due is clearly noted Check whether any art exists in file that may need to be cited in an IDS/SIDS If filing on or before the two-month due date, docket for expected receipt of an advisory action/notice of allowance If filing after the three-month due date, check whether an RCE/Notice of Appeal should accompany the response to keep the application alive and avoid unnecessary extension of time fees Has an Interview Request been considered/summarized? Has an After-Final Consideration Pilot (AFCP) 2.0 request been considered/included if applicable? Can a Terminal Disclaimer filing (in response to any double patenting rejection) be deferred or avoided?

16 Use of patent analytics to make prosecution decisions

17 Use of patent analytics to make prosecution decisions

18 Use of patent analytics to make prosecution decisions

19 QUESTIONS Questions on Today s Program Please submit your questions using the Q&A button on the control bar on your screen. If you have questions regarding Black Hills IP s services or processes, please contact: Jim Brophy Ph jbrophy@blackhillsip.com