Patent and trademark applications are processed through the United States Patent and Trademark Office (USPTO). This organization registers trademarks, patents and copyrights. To register a trademark for a product or service, intellectual property (IP) or business owners must submit a trademark application. Next, the USPTO reviews the application and examines the trademark. If the application is denied, the USPTO examining attorney sends an Office Action to the applicant, detailing the issues with the application.
The application process is complicated, and many IP owners and inventors benefit from the legal advice and services of intellectual property or patent attorneys. Polymath Legal PC is an experienced firm of intellectual property lawyers who can help you navigate the application process and respond to Final Office Actions. Call us today at (833) 931-6418 to learn more about our services.
Understanding Final Office Actions
An Office Action is a registered letter detailing the initial rejection of either a USPTO application or a trademark or patent. Common challenges with applications include incorrect classification of the goods and services the trademark will be used for, or the incorrect submission of the specimen (example of how the trademark will be used in commerce or a sample of the item to be patented). Additionally, there may be an issue with the trademark itself. It may be too similar to an existing trademark or something not unique enough to meet the threshold for a registered trademark.
Many issues noted in Office Actions can potentially be easily fixed, especially with the assistance of an intellectual property lawyer who understands the nuance of the trademark and patent application process. In order to obtain the trademark or patent, the applicant must re-submit a corrected application. However, if the application does not resolve the original issue noted by the original Office Action, the applicant is issued a Final Office Action notification. The registered letter includes the reasons the application or trademark is denied.
Receipt of a Final Office Action does not mean that the applicant is out of legal options. An applicant’s options include taking steps to make the application allowable or keeping the application process going, thus preserving the initial filing date. If you received a Final Office Action, consider visiting with Polymath Legal PC to learn all your options, given your specific set of circumstances.
Options for Responding to a Final Office Action
Applicants receiving a Final Office Action notification may be able to keep their application pending. The options for response depend on the reasons noted in the Final Office Action.
Respond with Allowable Subject Matter
The examining USPTO attorney may note that some patent application claims are allowable, so the application may be re-submitted with a specimen that represents the allowable claims. However, this is not an option unless explicitly stated in the Office Action. Consider whether applying with the allowable claims would narrow your patent options to an unacceptable degree.
Request Continued Examination
A Request for Continued Examination (RCE) removes the finality of the Final Office Action and allows for further discussion between the examining attorney and the applicant. For example, the applicant may request to clarify their amendments or petition further to file additional amendments to their application. This option requires an RCE response form and fee and allows for further arguments on behalf of the patent application.
An RCE, or “continuation,” may be filed while the parent application is still under review and can contain a new set of claims. The continuation application(s) allow applicants multiple chances for approval, and there is no limit to how many continuations may be attached to the original application.
Adding continuations to an initially denied application preserves the parent application’s filing date, which may be necessary to preserve the relevancy of prior art. This may be important to many applicants who have a competitor filing a patent for a similar item.
Appeal to the PTAB or TTAB
The Patent Trial and Appeals Board, and its sister body, the Trademark Trials, and Appeals Board, may consider a rejection from a USPTO examining attorney. This process is more complicated and time-consuming than the RCE and may be the next step if the applicant has hit a dead end with the RCE process. Additionally, the applicant may seek the broadest protection possible and has not found resolution through other means.
The PTAB and TTAB are panels of judges that review written arguments proposed by the applicant. Once the applicant proposes a Notice of Appeal, the examiner responds, maintaining their reasons for rejection. The applicant responds, and the PTAB or TTAB review their arguments. Applicants may also request a hearing to present an oral argument.
Once the Appeals Board reviews all the documentation, they make a final, binding decision. Applicants may pursue further appeals up to the US Supreme Court, but this is quite rare.
Opt for the After Final Consideration Pilot (AFCP) Program
A pilot program may be useful in specific circumstances, such as an amendment that narrows the applicant’s claims or presents a small clarification. These programs are best for minor adjustments and not for a substantive adjustment to the scope of the application.
The best option varies for each application. Consider the strength of the rejections, the length of time the case is pending, and any budget restrictions that may preclude one of these options before proceeding.
Contact an Experienced Intellectual Property Attorney Regarding Your Intellectual Property Rights
Each option to appeal the decision of the Final Office Action may have different consequences. If an applicant does not respond to Office Actions or Final Office Actions within six months of the date the letter was mailed, then the application is considered abandoned. Sometimes, a patent or trademark application should be abandoned altogether and a new one submitted. Filing multiple RCEs or going through the appeal process may be cumbersome for some parties, and potentially narrowing the scope of the patent may be unfeasible for how the item would be used and protected.
Every situation is different, and the options for responding to Final Office Actions vary. An experienced intellectual property lawyer can help applicants determine the best course of action and explain all of the applicant’s options. Polymath Legal PC is experienced in ensuring that Final Office Action responses are filed correctly and on time. Our legal team can review your case and explain your options and possible outcomes. Do not navigate this complicated process alone. Call us today at (833) 931-6418 to discuss your intellectual property rights.