Non Final Office Action and Final Office Action
10 Jan, 2019 8 Menteso

Non-Final Office Action and Final Office Action

One of the most important factors in order to obtain the Grant of the Patent Application is to overcome the Non-Final Office Action and Final Office Action Notices received from the Examiner at the PTO. The Office Actions received are Non-Final Office Action and Final Office Action. We receive one more rejection from USPTO which relates to the number of novel aspects claimed in the Patent Application.

Different jurisdictions have different laws for Office Actions. In this article, we will be discussing the Office Action Notices received from the USPTO in detail.

The three types of Office Action Notices received from USPTO are:

  1. Restriction/Election Requirement:
  2. Non-Final Office Action:
  3. Final Office Action:

Restriction/Election Requirement

The Restriction/Election Requirement is received from the USPTO Examiner when the claims filed by the Applicant contains more than one novelty feature. The document code for the notice is “CTRS“.

The Applicant can file only one novelty aspect in the claim set of the Patent Application the claims of the Patent Application should have only one novelty feature. If we desire to obtain a Patent for more than one novel feature, we should file a separate related Patent Application such as Divisional, Continuation, etc. (We will discuss in detail in another article). If the examiner feels that the Patent Application has more than one novelty aspect, then the examiner issues a Restriction/Election requirement. With the Restriction/Election Requirement Notice, the examiner provides one of the two options to the applicant. In the first case, the examiner will direct the applicant to restrict the claims with one or more claims set in the Patent Application. In the second scenario, the examiner will provide two or more claim set and will ask the applicant to respond to the notice by selecting one of the claims set. The Applicant can file other sets of claims in a separate Patent Application.  

The due date to File Response to Restriction/Election Requirement is 2 months from the receiving date from the USPTO. We get the extension for another 2 months by paying the extension fees with the USPTO.

In many cases, the Restriction/Election Requirement is issued along with the Non-Final Office Action Notice. In order to differentiate between office actions, one should check the Boxes section 1, section 2A, and 2B on the second page of the Office Action. It is good practice to review the complete Office Action document. It helps us to understand the primary reason for the rejection. This confirms the correct due date of the Office Action as the due date for the Non-Final Office Action is different from the Restriction/Election Requirement.

Non-Final Office Action 

The non-final office action is the first rejection received from the examiner for the claims filed by the Applicant in the Patent Application. The document is received from USPTO under the document code “CTNF”.

The applicant either argues the rejection raised by the examiner by providing the prior arts to support the same. Otherwise, the applicant amends the claims to overcome the examiner’s rejections. With non-final Office Action, the Applicant has one or more chances to obtain the grant for the Patent Application. After filing the Response to Non-Final Office Action, the applicant receives the Final Office Action or Non-Final Office Action again. The applicant can directly receive the Notice of Allowance from USPTO as well.

The due date to file the Response to Non-Final Office Action is 3 months from the receiving date of the USPTO. We get the extension for another 3 months to file the response by paying the extension fees with USPTO.

Final Office Action 

The final office action is the last rejection received from the examiner by the Applicant. The document code for the Notice is “CTFR”.

The applicant responds to Final Office Action in a similar way as that of Non-Final Office Action. However, the applicant does not have any further opportunity to defend his Patent Application after the response is Filed. 

It is suggested to file the first reply within two months of the mailing date of this final action. If the Response is filed within the two months, the Notice of Allowance may be received early. Otherwise, the Examiner issues the advisory action after the end of the THREE-MONTH shortened statutory period. As per the advisory action issued examiner, the applicant either File the Notice of Appeal or Request for Continued Examination (RCE). The examiner also provides other suggestions as well such as Amendment of claims, removal of specific aspects, etc.

The due date to file the Response to Final Office Action is similar to Non-Final Office Action. The due date is 3 Months from the receiving date of the Notice for Office Action. Similarly, we get the extension for another 3 months to file the response by paying the extension fees with USPTO.  However, the best practice is to docket the two-month deadline as the due date for Filing for the Response to Final Office Action so as to timely receive the Advisory Action.

In many cases, there is a tick in Box 2B i.e. Non-Final Office Action, however, the conclusion states that “THIS ACTION MADE FINAL”. We should docket the Notice as per the conclusion of the document.

In another scenario, there is a tick in section 2B but the remarks state Election / Restriction Requirement. In these cases, it is better to inform the client regarding the discrepancies and dockets as per the remarks.

Thus, the docketer should be extra careful and make it practice to review the complete Office Action document received. As any error in the due dates or missing the deadline affect client expenses.

For any further query, feel free to email me at shweta@menteso.com

Also, check 7 Most Common US Patent Docketing Errors. The complete article, you can’t miss if you want your docketing to comply with standards.

Comments

8 thoughts on “Non-Final Office Action and Final Office Action

  1. Ruby Kamboj says:

    Hi

    Can a Final office action be issued straight after filing a response to Restriction Requirement?

  2. Shweta Swaminathan says:

    Hi Ruby,

    Yes, the Final Office Action can be issued straight after filing of the Response to Restriction Requirement.
    The examiner examines the elected claims set and issues office action accordingly.

  3. Deepali says:

    In what circumstances applicant receive Non final official action again ?

    1. Shweta Swaminathan says:

      Hi Deepali.
      We receive Non-final office action when examiner has references or prior art questioning the Patentability aspect of the invention. The examiner may have references or arguments which makes the invention under examination not novel, obvious, may not be applicable to Industrial Applicability. In response to the office action, we clarifies the objection raised by the examiner and amend our claims to overcome the objection.

  4. sidharth says:

    Can final office action be the frist office action received by applicant?

    1. Shweta Swaminathan says:

      Hi Sidharth.
      Yes, in some cases we receive the Final Office Action can be the first office action. This happens when there is a requirement of minor changes in the invention to issue the Notice of Allowance. In some scenarios, there is no office action received. In those scenarios, the invention is Patentable and invention is allowed by simply having an examiner interview. The examiner guide the inventor regarding the formalities to be followed and once completed, the Notice of Allowance is issued.

  5. Deepali says:

    Hi,

    In what circumstances we can receive non final office action again ?

    1. Shweta Swaminathan says:

      Hi Deepali. Every examiner has three chances to reject the invention. First two being the Non-Final Office Action and third is Final Office Action.
      We receive the second Non Final Office Action, if the examiner is not convinced with the arguments made for the First Office Action.

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