Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[JasonR]

Received a final office action for my Utility Patent Application on April 14.  I haven't replied to it because most of my claims were rejected.  I thought I had no chance and was thinking I would abandon it.  Upon closer review, I discovered that a few dependent claims that were only objected to because their independents were rejected could potentially be re-drafted as independent claims and be accepted. 

Below is what it says at the top of the Office Action Summary.  Do I still have time to keep my patent application alive?  Can someone please translate it into English for me?  Will my reply require an extenstion fee?  Will a reply grant any additional time beyond October 14 (6 months) for more office actions in case my examiner finds problems with my response.

"A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTHS OR THIRTY DAYS, WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
-Extensions of time may be available under the provisions of 37 CFR 1.136(a).  In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing date of this communication.
-If NO period for reply is specified above, the maximum statutory periord will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
-Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED.
 Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term adjustment.

[bleedingpen]

Received a final office action for my Utility Patent Application on April 14.  I haven't replied to it because most of my claims were rejected.  I thought I had no chance and was thinking I would abandon it.  Upon closer review, I discovered that a few dependent claims that were only objected to because their independents were rejected could potentially be re-drafted as independent claims and be accepted. 

Below is what it says at the top of the Office Action Summary.  Do I still have time to keep my patent application alive?  Can someone please translate it into English for me?  Will my reply require an extenstion fee?  Will a reply grant any additional time beyond October 14 (6 months) for more office actions in case my examiner finds problems with my response.

"A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTHS OR THIRTY DAYS, WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
-Extensions of time may be available under the provisions of 37 CFR 1.136(a).  In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing date of this communication.
-If NO period for reply is specified above, the maximum statutory periord will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
-Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED.
 Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term adjustment.

You have about a week to get a response filed with EOT

[JasonR]

Thanks for your quick response.  Which extension of time fee would I be paying?  I'm a small entity.  Looks like there are 1, 2, 3, 4, and 5 month fees, going up exponentially (yikes!).

[Simpletown]

You are at the 5 months mark, so that is the fee you need to pay. Since they were all objected to, if they aren't further dependent from each other just pay a fee for more independent claims and submit them all as independent claims for the broadest coverage. If the all follow as dependent you might just roll the first one that is objected to up into the independent. You can use PAIR, fax, or mail to file. Up to you.

[JasonR]

Wow well that means I screwed up big time, because as a pro-se inventor I don't have the means to pay a $1345 fee right now.

Do I have any other options/paths I can use?  Since the independent claims will have drastically changed, can I abandon this application and start over with a new one?  Can I do a new PPA and have an interested company take over the patent process?

[Dazed-n-confused]

You are at the 5 months mark, so that is the fee you need to pay. Since they were all objected to, if they aren't further dependent from each other just pay a fee for more independent claims and submit them all as independent claims for the broadest coverage. If the all follow as dependent you might just roll the first one that is objected to up into the independent. You can use PAIR, fax, or mail to file. Up to you.

WHOA THERE. 

I think the above was meant to say, "you are between the 5th and 6th month mark, so the fee you need to pay is the THREE MONTH", small entity, extension of time fee of $635 (http://www.uspto.gov/web/offices/ac/qs/ope/fee092611.htm#extend).

The way the extension fees work is, if you have 3 months to respond but you respond just before (or right at) end of 4th, you're buying 1 month extension.  Or in your case, you had 3 months to respond but you are responding near the end of the 6th month, so you have to buy the 3 month extension of time.

[Dazed-n-confused]

Wow well that means I screwed up big time, because as a pro-se inventor I don't have the means to pay a $1345 fee right now.

Do I have any other options/paths I can use?  Since the independent claims will have drastically changed, can I abandon this application and start over with a new one?  Can I do a new PPA and have an interested company take over the patent process?

See above, the fee for you is the 3 month fee of $635, not $1345.

You can file a continuation application if this is done before the 14th.  If you believe the examiner is just plain wrong, by the way, you can also file a Notice of Appeal in this case (with the 3-month extension also).

I do not believe you can "file a new PPA" directed to the same subject matter. 

The other problem is, even if you can afford the $635 and get the answer filed on time, because you are in final rejection if the examiner also doesn't act on it (withdrawing the rejection and putting it back into prosecution, or allowing) also by the 14th, you're going abandoned.  You can try to coordinate with the examiner (file EFS-Web or fax to get it to him/her asap) and call the examiner and discuss what you're doing and try to get agreement.  But note the examiner is not bound by such an agreement and may change his/her mind and maintain finality instead, in which case you go abandoned.

There are ways to prevent this, but they also cost money.  Generally, you can file your response along with an RCE ($465) and the extension fees ($635).  Or you can file your response along with a notice of appeal ($310) and the extension fees ($635).  Only these two things really "reset the clock" after you're in final rejection land.

[NJ Patent1]

JasonR:  Time is tight.  You might want to consider filing a prophyactic notice of appeal.  If for any reason the Examiner does not inicate that at least one claim is allowable by the 14th, you will have paid for an "option" to file a RCE (withdrawing the appeal) and keep the case alive. 

[PatentDave]

If you're satisfied with the claim coverage of the objected-to dependent claims, simply roll those limitations into the correlating independent claims and take the allowance.  You can also file a continuation before issuance on the original independent claims if you want to fight for those ones still. 

The wise decision is often to take what they're giving you and continue to fight for the other claims if the scenario is favorable.

[JasonR]

JasonR:  Time is tight.  You might want to consider filing a prophyactic notice of appeal.  If for any reason the Examiner does not inicate that at least one claim is allowable by the 14th, you will have paid for an "option" to file a RCE (withdrawing the appeal) and keep the case alive. 

NJ Patent1,

What fees would be involved in that?  Am I correct in understanding that this is a way to find out of the objected claims the examiner suggests would be allowable if drafted as independent claims will indeed be allowed?  Do I pay for the extention of time now or later?

[JasonR]

Wow well that means I screwed up big time, because as a pro-se inventor I don't have the means to pay a $1345 fee right now.

Do I have any other options/paths I can use?  Since the independent claims will have drastically changed, can I abandon this application and start over with a new one?  Can I do a new PPA and have an interested company take over the patent process?

See above, the fee for you is the 3 month fee of $635, not $1345.

You can file a continuation application if this is done before the 14th.  If you believe the examiner is just plain wrong, by the way, you can also file a Notice of Appeal in this case (with the 3-month extension also).

I do not believe you can "file a new PPA" directed to the same subject matter. 

The other problem is, even if you can afford the $635 and get the answer filed on time, because you are in final rejection if the examiner also doesn't act on it (withdrawing the rejection and putting it back into prosecution, or allowing) also by the 14th, you're going abandoned.  You can try to coordinate with the examiner (file EFS-Web or fax to get it to him/her asap) and call the examiner and discuss what you're doing and try to get agreement.  But note the examiner is not bound by such an agreement and may change his/her mind and maintain finality instead, in which case you go abandoned.

There are ways to prevent this, but they also cost money.  Generally, you can file your response along with an RCE ($465) and the extension fees ($635).  Or you can file your response along with a notice of appeal ($310) and the extension fees ($635).  Only these two things really "reset the clock" after you're in final rejection land.

In regards to my above options, going the route of using a notice of appeal would only be in case I diagree with my examiner's final communication (I do not disagree).  My only issue is that he implied that some of my dependent claims might be allowable if redrafted as independent claims, while omitting all the rejected claims.  In this case I need to go with an RCE plust extension fees, correct?

[Dazed-n-confused]

In regards to my above options, going the route of using a notice of appeal would only be in case I diagree with my examiner's final communication (I do not disagree).  My only issue is that he implied that some of my dependent claims might be allowable if redrafted as independent claims, while omitting all the rejected claims.  In this case I need to go with an RCE plust extension fees, correct?

I believe you can still go either way.  However, while the route of complete reply + 3 month extension + notice of appeal does "stop the clock", I am not sure it will guarantee the Examiner will fully consider your response.  What I mean is, he may, but I'm not sure he's obligated to do so.  Because it does start another clock - 2 months until an appeal brief is due, and the examiner could just sit and wait for that.

I am sure that with a complete reply + 3 month extension + RCE, the examiner is obligated to consider your response.  Hopefully the indication you've received that your previously objected to claim may be patentable, still holds.  Be a real painful lesson in the caprice of federal agencies to shell out the bucks and have it go south on you again.

Good luck.

[klaviernista]

Jason:

To be clear, you have until October 14 to take action to keep your case going (assuming the mailing date of April 14 is correct).

You have the following options at this time (note that ALL but #5 require a petition and fee for a three month extension of time):

1.  File an RCE with an appropriate "submission" under 37 C.F.R. 1.114 (e.g., new arguments, an amendment, an information disclosure statement, etc.)  Cost for the RCE is about the same as filing a new application, minus fees related to the size of the application or number of claims (assuming you don't add more claims than you previously paid for in an amendment)

2.  File a notice of appeal.  Costs a few hundred bucks, and will buy you 2 months (extendable up to five additional months) to decide how you want to proceed.  While I can't speak to your case specifically, I usually only recommend filing a notice of appeal when: 1) the client needs extra time to perform some action (e.g., comparative testing to overcome an obviousness rejection); or 2) the client intends to actually appeal the examiner's decision to a higher power within the USPTO.  If the client merely wants to file an amendment or new arguments, an RCE is usually the best route unless extra time is needed to develop the required 1.114 submission.

3.  File a response after final rejection, with or without a claim amendment.  I would not take this course of action if I were in your shoes, as it will not toll the response deadline and it is extremely unlikely that the examiner will have time to act on your case before the response deadline expires.  FWIW, I rarely file responses after final anymore unless I can make an "apples vs. oranges" argument, or if I am presenting an amendment that will place a case in immediate condition for allowance.  Otherwise, my experience has been that an examiner will respond to an response after final with an advisory action (nearly 100% of the time).  And if that occurs, it will be necessary to take one of the other options mentioned in this list to properly response to the OA.  Note that in you case, an advisory action would probably be fatal to the application, as it would issue after the response period expired.

4.  File one or more continuing applications claiming priority to the application at issue (costs the same as filing a new application (claims and size fees included); benefits include providing substantial time to determine how to proceed with a case, opportunity to "shift" the claims to another invention, etc.

5.  Abandon the application (not a desirable option in most cases).

Good luck.

Klav




 

[klaviernista]

Do I have any other options/paths I can use?  Since the independent claims will have drastically changed, can I abandon this application and start over with a new one?  Can I do a new PPA and have an interested company take over the patent process?

If the current application has published, you do not want to abandon it in favor of a new application.  Why?  Because the old application could serve as anticipatory prior art against your new application.

Better option if you want to "restart" is to file a continuation (basically, a new application claiming priority to an existing application).  But note that the prosecution history of the existing application will bear on the continuation.

[Dazed-n-confused]

Better option if you want to "restart" is to file a continuation (basically, a new application claiming priority to an exsiting application).  note that the prosecution history of the existing application will bear on the continuation.

(klaviernista or anyone in the know - is part (b) 100% correct?)


Good summary in klaviernista's two posts above. 
And as klaviernista mentioned above if you file the continuation claiming priority to your current app, you sill need to file the 3 month extension in the current application. [Edited this para. down a bunch after I re-read klaviernista post and saw he'd already covered a question I initially asked]

This continuation route klaviernista mentions may be useful to you in one other regard - (b) you could defer the continuation's filing/search/exam fees for a while, maybe as much as several months, at relatively small additional later "surcharge" cost to you.  This is because if you file an application that is missing (e.g.) a signed declaration or the fees required on application filing, you still obtain your filing date.  What the PTO does then is issue a "missing parts" Notice, giving you 2 months from the Notice to correct what is missing (in this case, the continuation's application fees).  The "Surcharge" for this is $65 for small entity (noting that at the same time, you must also cough up all the unpaid filing/search/exam fees).

$65 is a pretty steep "loan" for a few month's extra time in view of the normal filing fees, but if you just don't have the normal filing fees now, it's a route to consider.  Quickly.   


ETA here's the fees link again.  http://www.uspto.gov/web/offices/ac/qs/ope/fee092611.htm#patapp