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Whether the process is performed by an independent inventor or a corporate entity that regularly files U.S. patent applications, having a patent application(s) drafted, filed, and prosecuted involves a substantial investment in invention development time and costs, as well as legal expenses. An additional emotional investment is often based on the hope that pursuing and protecting the invention(s) will result in financial rewards.
A patent application filed today will join a backlog of nearly 600,000 filed applications awaiting the beginning of the examination process. Examination usually begins about 18 months after filing, when a first Office Action (examination report) will be mailed. Once begun, examination in the U.S. Patent and Trademark Office (USPTO) will last about 12 months or more.
Roughly 85% of all new patent applications are rejected in first Office actions. For patent practitioners, this is business as usual. For inventors and those with vested interests in patent applications, receiving an initial non-final rejection can be disappointing and worrisome. It may be of some comfort to note that over 80% of patent applications that eventually issued as U.S. patents were initially rejected during examination. Receiving an initial rejection at the beginning of examination may not have any bearing on whether or not a patent application eventually issues as a patent.
In his Patently O blog, University of Missouri School of Law associate professor Dennis Crouch writes, “I like to think of patent prosecution as a negotiation between the patent applicant and the USPTO over the proper claim scope and patent coverage.” Parties engaged in negotiations typically work through a process that eventually results in a compromised outcome. Thus, in Mr. Crouch’s view, patent prosecution (examination) negotiations between the USPTO and patent applicant would likely result in the patent applicant giving up some breadth of claim scope and patent coverage in exchange for obtaining an allowed patent.
Unfortunately, in the “public’s interest” of “limiting prosecution to as few actions as is consistent with a thorough consideration of its merits,” the rules of patent practice provide that “on the second or any subsequent examination or consideration by the examiner, the rejection or other action may be made final.”1
Making an Office action final allows a patent examiner to unilaterally terminate the negotiation process between the patent applicant and the USPTO before an agreed-upon, compromised outcome can be reached.
After a Final Office Action
Final Office actions are issued in about 40% of pending applications. Upon receiving a final Office action, a patent applicant has limited options. An appeal can be filed with the Patent Trial and Board of Appeal; however, this can be an uncertain, expensive option that currently extends pendency from filing to a decision by the Board to more than seven years.
Another option is to reopen the negotiation process with the USPTO by filing a Request for Continued Examination (RCE). This option generally involves the patent applicant offering to further narrow the claim scope.
Absent proceeding to appeal or filing an RCE, a patent application will go abandoned six months from the mailing date of a final Office action. Currently, for every 2.3 patent applications allowed, one patent application is abandoned. In 2013, more than 100,000 patent applications were abandoned.
When a patent application is abandoned, prosecution stops and the application will not mature into an issued patent. As a consequence, the patent applicant will not obtain a patent grant, which would otherwise provide federal rights to preclude others from practicing the invention sought to be patented.
If the patent application is published (generally in 18 months from the earliest filing date, unless a request not to publish was filed), the general public, including any competitors, will have a full disclosure of the invention, and the patent applicant may not be able to preclude others from practicing the invention.
Abandoning an application therefore has the effect of making a full public disclosure of an invention while simultaneously failing to prevent others from exploiting the invention. All development time and costs, legal expenses and emotional investments are not just lost—they are given away to the general public.
Preventing a Loss
One way that such a loss might be prevented is to file a request not to publish a patent application. Without filing such a request, a patent application will publish 18 months from its earliest filing date. Such a request can be filed only if the patent applicant does not intend to pursue foreign patent rights to the invention. U.S. patent applicants often choose to retain their option to pursue foreign patent rights and therefore do not file requests not to publish, even when they have no actual initial (or later) interest or plans to pursue foreign patent rights.
If a request not to publish is filed, the USPTO maintains the confidentiality of the application; should the application later be abandoned, there is no public disclosure by the USPTO, and the patent applicant can try to maintain the secrecy of the invention and possibly rely on trade secret protection to protect the invention and/or nondisclosure agreements. Either way, the patent applicant can avoid giving the invention away by publication by the USPTO.
Filing an RCE
Before abandoning a patent application, consideration should be given to filing an RCE to continue prosecution. A recent study of 20,000 published applications found that of those applications that eventually issued as patents, RCEs were filed 22% of the time. Had the patent applicants chosen to abandon these applications upon receipt of a final Office action rather than file an RCE, they would have missed out on obtaining federal patent rights to their inventions.
In a March 13, 2013 posting, the IPWatchdog® noted that of all of the applications that were independently allowed by the three top-rated patent law firms, 22.7%, 20.6% and 23.2%, respectively, had at least one RCE filed during the prosecution. Thus, filing an RCE can significantly increase the chances of obtaining a granted patent and should give applicants reason to reconsider the option of abandoning an application after a final Office action.
Another avenue that can be explored after receiving a final Office action is participation in the USPTO’s current After Final Consideration Pilot 2.0 (AFCP 2.0) program. This requires the filing of a request for consideration under the program, an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect, and a statement that the applicant is willing and available to participate in any interview initiated by the examiner concerning the accompanying response.
The AFCP 2.0 program went into effect on May 17 and is only scheduled to run through September 30. Because AFCP 2.0 is an extended modification of the original After Final Consideration Pilot program that began April 2, 2012, it is anticipated the program will be extended in some form after September 30, 2013.
1. Patel, R., Brownstone, D., and Hulse, R., “Understanding after Final and after Allowance Patent Practice,” www.fenwick.com/fenwickdocuments/2003_pli.pdf.
Any views or opinions expressed in this column are those of the author and do not represent those of Ceramic Industry, its staff, Editorial Advisory Board or BNP Media.