Introduction
After a patent examiner issues a Final Office Action, an applicant may still have several procedural options. One important document that may follow an applicant’s response to a final rejection is an Advisory Action. Understanding when an Advisory Action is issued, what it means, and how it affects prosecution is an important part of patent prosecution practice.
This article provides a beginner-friendly overview of after-final practice, with particular attention to Advisory Actions issued by the United States Patent and Trademark Office (USPTO).
What Is After-Final Practice?
An applicant normally has an opportunity to respond to a nonfinal Office Action. After the examiner considers the application and issues a Final Office Action, however, the applicant’s options become more limited.
The term “final” does not necessarily mean that prosecution of the application has ended. Rather, finality generally limits the applicant’s right to amend the claims as a matter of course and affects the types of amendments and evidence the examiner is required to consider.
The USPTO’s rules governing amendments after final rejection are primarily found in 37 C.F.R. § 1.116. The MPEP provides additional guidance, particularly MPEP § 706.07 and MPEP § 714.13.
What Is an Advisory Action?
An Advisory Action is an Office communication issued after an applicant files a response to a Final Office Action when the examiner determines that the response does not place the application in condition for allowance or otherwise does not overcome the outstanding rejection in a manner that permits prosecution to proceed normally.
An Advisory Action may explain, for example, that:
- an amendment filed after final will not be entered;
- the amendment does not place the claims in condition for allowance;
- the amendment raises new issues that would require further examination;
- the applicant’s arguments do not overcome the outstanding rejection; or
- the examiner will not enter the proposed amendment under the after-final practice.
The Advisory Action is therefore important because it tells the applicant how the examiner treated the after-final response.
When Is an Advisory Action Issued?
An Advisory Action may be issued when an applicant responds to a Final Office Action but the examiner determines that the response does not result in an allowable application.
For example, suppose the examiner finally rejects claim 1 under 35 U.S.C. § 103. The applicant then files an amendment adding several limitations to claim 1.
The examiner reviews the amendment and determines that the amendment would require additional searching or raises a new issue. The examiner may refuse to enter the amendment under the after-final rules.
The examiner may then issue an Advisory Action explaining that the amendment has not been entered.
The specific treatment depends on the circumstances of the amendment and the applicable USPTO rules.
Amendments After Final Rejection
The basic rule governing amendments after final rejection is found in 37 C.F.R. § 1.116.
Under this rule, after final rejection, an amendment may be entered when it meets the applicable requirements for after-final practice. For example, an amendment may be entered when it:
- Places the application in condition for allowance;
- Cancels rejected claims or otherwise places the application in better condition for consideration; or
- Meets other requirements established by the rule and USPTO practice.
An applicant should therefore not assume that every amendment submitted after a Final Office Action will automatically be entered.
The MPEP explains the USPTO’s practice concerning amendments after final rejection. See MPEP § 714.13.
Example: Amendment Not Entered
Assume an application contains claims 1–10.
The examiner issues a Final Office Action rejecting claims 1–10 under §§ 102 and 103.
The applicant files an after-final amendment that substantially changes claim 1 and adds several new limitations. The examiner determines that the proposed amendment would require additional examination and does not place the application in condition for allowance.
The examiner may issue an Advisory Action stating that the amendment has not been entered.
The applicant must then consider the remaining procedural options rather than assuming that the proposed amendment is part of the pending claims.
Example: Amendment That Places the Application in Condition for Allowance
Suppose claim 1 is finally rejected because of a particular limitation.
The applicant files an amendment that properly adds a limitation supported by the original disclosure and that overcomes the examiner’s rejection. If the examiner determines that the amended claim is allowable and the amendment otherwise complies with the rules, the amendment may be entered and the application may proceed toward allowance.
In such a situation, an Advisory Action indicating that the amendment will be entered may not be necessary in the same manner as when the amendment is refused.
The important point is that the examiner evaluates an after-final amendment under the applicable USPTO rules rather than treating it as an automatic right to amend.
Advisory Action and the Appeal Process
An Advisory Action is particularly important when an applicant is considering an appeal to the Patent Trial and Appeal Board (PTAB).
If the applicant disagrees with the final rejection, the applicant may file a Notice of Appeal and an appeal brief within the applicable time periods and subject to the applicable rules.
The USPTO explains the appeal process in 37 C.F.R. §§ 41.31–41.54 and in MPEP Chapter 1200.
An Advisory Action does not itself constitute a new Final Office Action. Instead, it generally provides information about the examiner’s treatment of the applicant’s after-final response.
Advisory Action and RCE Practice
Another important option after final rejection is a Request for Continued Examination (RCE).
An RCE is governed principally by 37 C.F.R. § 1.114.
An RCE allows prosecution to continue after a final rejection without requiring the applicant to file an appeal. The applicant generally submits the RCE together with the required fee and a submission that meets the requirements of the rule.
For example, an applicant might receive a Final Office Action and then submit an amendment. If the examiner will not enter the amendment under after-final practice, the applicant may consider filing an RCE so that the amendment can be considered during continued examination.
An RCE and an appeal are therefore different procedural paths.
Advisory Action and the Six-Month Statutory Period
A Final Office Action generally establishes a period for the applicant to respond. Under 35 U.S.C. § 133 and 37 C.F.R. § 1.135, failure to take appropriate action within the applicable period can result in abandonment.
The Office Action normally identifies the shortened statutory period and the consequences of failing to respond.
An applicant should therefore carefully review:
- the date of the Final Office Action;
- the shortened statutory period;
- any extension-of-time provisions;
- the date of the after-final response;
- the date of the Advisory Action; and
- the deadline for taking further action.
An Advisory Action does not automatically eliminate the applicant’s obligation to comply with the applicable statutory deadline.
Why the Date of the Advisory Action Matters
The timing of an Advisory Action can be important in determining how much time remains for the applicant to take additional action.
For example, an applicant may submit an after-final amendment shortly before the end of the shortened statutory period. If the examiner later issues an Advisory Action indicating that the amendment will not be entered, the applicant may need to act promptly.
Possible actions may include:
- filing an RCE;
- filing a Notice of Appeal;
- submitting an appropriate amendment when permitted;
- requesting an interview with the examiner; or
- taking another action permitted by the applicable rules.
The applicant should calculate the applicable deadline rather than assuming that receipt of an Advisory Action automatically creates a new full response period.
Question: If an applicant files after final response within 2 months from the mailing date of the final office action, how is the mailing date of the advisory action affect the extension period?
Answer: (1) When the advisory action is mailed after 3-month SSP, extension period starts from the mailing date of the advisory action. (2) When the advisory action is mailed before 3 months SSP, extension period starts from the 3-month SSP. There is an absolute limit: The statutory period can never extend 6 months from the mailing date of the final office action.
Examiner Interviews After Final
An examiner interview can sometimes be useful after a Final Office Action.
An interview may help the applicant understand:
- why a proposed amendment was not entered;
- what claim limitations may overcome the rejection;
- whether an amendment could place the application in condition for allowance; or
- whether the examiner believes an RCE or appeal is appropriate.
USPTO guidance concerning interviews is provided in MPEP § 713.
An interview does not replace a required written response or other required filing unless the applicable USPTO procedure expressly permits it.
After-Final Practice and New Matter
An applicant must also be careful not to introduce new matter into a nonprovisional patent application.
Under 35 U.S.C. § 132(a), amendments introducing new matter into the disclosure are not permitted.
For example, if an applicant attempts to add a technical feature after final rejection that was not disclosed in the application as originally filed, the amendment may present a new-matter problem.
The applicant should therefore determine whether the proposed amendment has adequate support in the original disclosure.
After-Final Practice: A Practical Example
Consider the following simplified prosecution history:
Step 1: The examiner issues a Final Office Action rejecting claim 1 under § 103.
Step 2: The applicant files an amendment to claim 1 after final.
Step 3: The examiner determines that the amendment requires further examination and does not place the claim in condition for allowance.
Step 4: The examiner issues an Advisory Action explaining that the amendment will not be entered.
Step 5: The applicant reviews the Advisory Action and considers the available procedural options.
The applicant may decide to:
- file an RCE with an appropriate submission;
- pursue an appeal;
- revise the prosecution strategy based on an examiner interview; or
- take another action permitted by the USPTO rules.
The correct choice depends on the circumstances of the particular application.
Advisory Action vs. Final Office Action
These documents serve different purposes.
A Final Office Action is an Office action in which the examiner makes the rejection final under the applicable USPTO rules.
An Advisory Action generally responds to an applicant’s after-final submission and explains the examiner’s treatment of that submission.
Therefore, an Advisory Action should not simply be treated as another Final Office Action.
Patent Bar Practice Point
For Patent Bar examination purposes, remember the following distinction:
A response filed after final rejection is not automatically entitled to entry.
The examiner may refuse to enter an amendment under the circumstances specified in the USPTO rules and practice.
When an amendment is not entered, the applicant should examine the Advisory Action and determine what procedural step is available before the applicable deadline.
A useful sequence to remember is:
Final Office Action → Applicant’s After-Final Response → Examiner’s Review → Advisory Action, if appropriate → RCE or Appeal or Other Permitted Action
Conclusion
After a Final Office Action, an applicant’s ability to amend the application as a matter of right is more limited. An applicant may nevertheless have several options for continuing prosecution.
An Advisory Action is important because it communicates the examiner’s treatment of an after-final submission, including whether a proposed amendment will be entered. After receiving an Advisory Action, the applicant should carefully review the outstanding rejections, determine the applicable deadline, and consider available procedures such as an RCE or appeal.
Understanding the relationship between a Final Office Action, an after-final amendment, an Advisory Action, an RCE, and an appeal is an essential part of learning U.S. patent prosecution.
References
The following authorities are useful for studying after-final practice:
- 35 U.S.C. § 132 — Notice of rejection; reexamination; amendment.
- 35 U.S.C. § 133 — Time for prosecuting application.
- 37 C.F.R. § 1.114 — Request for continued examination.
- 37 C.F.R. § 1.116 — Amendments and affidavits or other evidence after final action.
- 37 C.F.R. § 1.135 — Abandonment for failure to respond within time period.
- 37 C.F.R. §§ 41.31–41.54 — Patent appeals to the Patent Trial and Appeal Board.
- MPEP § 706.07 — Final rejection.
- MPEP § 714.13 — Amendments after final rejection.
- MPEP § 713 — Interviews.
- MPEP Chapter 1200 — Appeal.
- MPEP Chapter 1300 — Allowance and issue.
For authoritative information, applicants and practitioners should consult the current versions of the United States Code, Code of Federal Regulations, and USPTO Manual of Patent Examining Procedure (MPEP) because USPTO procedures and rules can be amended.
Educational disclaimer: This article provides general educational information about U.S. patent prosecution. It is not legal advice and does not create an attorney-client relationship.