“Final” Versus “Non-Final” Office Action

Designations: Roadblocks to Compact Prosecution 1
Kate S. Gaudry 2
Kilpatrick Townsend & Stockton LLP

The patent office, applicants, and the public have a shared interest in promoting compact prosecution. Quickly and efficiently arriving at a final disposition (allowed or abandoned) would reduce the PTO’s backlog and allow applicants and the public to identify the scope of protection. Currently, PTO rules (though no statutes) specify that office actions are to be characterized as “final” or “non-final.” It is our position that this practice hinders compact prosecution.

Specifically, compact prosecution is facilitated by a cooperative interaction between an examiner and applicant. Compact prosecution requires an applicant to recognize when an examiner has set forth a valid rejection and respond accordingly by amending the claims or abandoning the application. Likewise, compact prosecution requires an examiner to withdraw a rejection when an applicant presents a strong argument that the rejection is erroneous. The final/non-final system discourages these cooperative actions.

Final/Non-Final System Discourages Withdrawal of Prior-Art Rejections
Examiners’ count system (used to evaluate their productivity) awards them:
• 1.25 counts for a first office action (issued prior to any Request for Continued Examination (RCE) filing);
• 1 count for a first office action issued after a first RCE filing;
• 0.75 counts for a first office action issued after a second or subsequent RCE filing;
• 0.5 counts for an allowance or abandonment;
• 0.25 counts for any final office action; and
0 counts for a non-final office action that was not a first action after filing of the application or filing of an RCE.

Issuing a second-action final office action thus provides multiple benefits to the examiner. First, the action itself results in 0.25 counts, versus the 0 that would be received for a non-final action. Further, it pushes the applicant towards filing an RCE, which would allow the examiner to receive an additional 1 count for the next action.

A second or subsequent office action can be characterized as final as long as it does not include a new ground of rejection that is neither necessitated by an amendment of the claims nor based on an Information Disclosure Statement filed in accordance with 37 C.F.R. § 1.97(c). 3 Thus, the count system offers an incentive for standing by old rejections.

Final/Non-Final System Discourages Amendments
First, applicants cannot, as a matter of right, amend any finally rejected claim. The examiner can, upon receiving an amendment, refuse to enter the amendment by indicating that it would raise new issues and require further consideration or support. The applicant must then pay an RCE fee for the amendment to be entered. If the amendments are minor enough not to “raise new issues,” the examiner must enter and consider them without requiring the applicant to pay the RCE fee. Thus, applicants are disincentivized from amending their claims as drastically as may be appropriate.

Second, as noted above, applicant amendments in response to a first office action can provide a basis for the examiner to characterize the next office action as final, even if it includes new grounds of rejections. Thus, while there may be reason to amend claims (for example, to clarify a limitation), applicants may hesitate to submit such an amendment for fear of causing the next action to be final. As noted, a “final” designation limits amendment possibilities and creates a reasonable likelihood that the applicant will have to make an RCE fee payment for any amendments to be entered.

Finally, the PTO has offered an initial and 2.0 version of an After-Final Consideration Program. The program provides the examiner with limited extra time to consider submitted amendments. However, applicants must certify that the response includes “an amendment to at least one independent claim, and the amendment does not broaden the scope of the independent claim in any aspect.” This requirement may again discourage submission of some kinds of amendments, such as clarifying amendments or amendments which delete one or more limitations, when the applicant is hoping that the examiner will consider new amendments quickly or for no additional charge.

Our Position
We strongly support the proposal to modify the current examination protocol. Particularly, we support ceasing the characterization of office actions as final or non-final. All office actions would be non-final, and applicants would be free to amend the claims in response to any action. RCEs would no longer be used.

We support an escalating fee structure. Applicants would be required to submit a fee with each response (potentially allowing one or two initial responses to be filed without a fee, presumably paid for in advance by the examination fee), and the fee would increase with each response. We believe that this increasing fee structure would deter endless prosecution.

The proposed change to the examination protocol would need to be accompanied by a modification to the count system. Currently, examiners are awarded counts for final office actions and actions following RCEs, each of which would be eliminated in the proposed new structure. We propose revising the count system to provide a gradual reduction in the counts awarded per office action issuance until a bottom limit is reached. For example, 1.0 counts could be awarded for a first action, 0.75 counts for a second, 0.5 for a third, 0.25 for a fourth and 0 for any subsequent action. A single count (1.0) could be awarded for an allowance or abandonment. This count structure would motivate examiners to expediently work to achieving compact prosecution.

Our proposed model would encourage applicants to amend their claims as appropriate and encourage examiners to focus on issuing quality rejections. These new incentives will promote compact prosecution by reducing office action counts and application pendency.

  1. A prior version of this comment was submitted to the U.S. Patent and Trademark Office on May 6, 2015, in response to its Request for Comments on Enhancing Patent Quality, 80 Fed. Reg. 6475 (Feb. 5, 2015).
  2. This comment is also supported by Matthew Kitces, Richard Almon, Angel Lezak, Adam J. Gianola, and Thomas Franklin. It is attributable only to the author and indicated supporters, and does not represent the opinions or beliefs of any other individuals, companies, or organizations.
  3. U.S. Patent & Trademark Office, Manual of Patent Examining Procedure § 706.07(a) (2014).