7 Responses To A USPTO Final Office Action

Despite its name, a “final” office action from the United States Patent and Trademark Office (USPTO) does not mean your trademark application has been rejected. Instead, this communication represents the last opportunity you have to correct the application and file a response during the application process. If you are receiving this notice, you would have already received at least one previous rejection from the USPTO, and the trademark examiner is providing the reason why the application is not allowable. For example, you might have responded to a prior office action from the USPTO but the examiner was not persuaded by your arguments or any changes you made. 

Fortunately, there are many responses to a USPTO final office action that you can make, either to attempt to make the application allowable or to continue your legal matter. If your attempt is successful and satisfies the legal problems identified in the final office action, your trademark application proceeds toward registration. Otherwise, your trademark application can be abandoned. 

1. File a Response Within Two Months of Office Action

In many situations, you might want to file a response within two months of the date on the final office action. As long as you file within two months of this date, you can possibly minimize your extension fees. The examiner may also review the response more quickly. 

With this approach, the applicant responds to the action, primarily by making arguments about why the application should be allowable. There may be few or no amendments to the application. The USPTO does not charge a filing fee if the applicant makes a response within this timeframe. This option also avoids having to pay request for continued examination fees. 

If the response is successful, the USPTO issues a notice of allowance. However, if the examiner finds that the response does not overcome the final office action, the USPTO issues an advisory action. 

2. File a Response After Two Months of Office Action

Applicants can technically file a response after two months of the office action. However, this can make the extension fees more expensive, so it is often not a recommended course of action. 

3. Use a Pilot Program to Make Your Response 

The USPTO has pilot programs that may be able to help in this type of situation. For example, the After Final Consideration Pilot Program encourages interviews between the applicant and the examiner. During this process, the applicant files a response, amends at least one independent claim, and includes a statement that they would be willing to participate in an interview with the examiner. The examiner takes one of the following actions:

• Determines the response requires more than three hours of additional research and issues an advisory action
• Issues a notice of allowance
• Schedules an interview to further discuss the response and then issues an advisory action or notice of allowance 

There is no fee to participate in this process.

4. Make a Request for Continued Examination 

Another response to a USPTO final office action that the applicant can take is to make a request for continued examination, which requires payment of a fee and a response. This option may be most appropriate when there are additional arguments or amendments the applicant wants to make and is also making progress toward a favorable decision. There is a charge for filing this type of request. This option removes the finality of the final office action. If the applicant files subsequent requests for continuation, there may be associated fees with these requests.

5. File a Notice of Appeal 

If the applicant believes that the adverse decision is in error, they can appeal the decision to the Patent Trial and Appeals Board. This request must be accompanied by the appropriate fee. 

Applicants have two options when they file a notice of appeal:

• Request a pre-appeal brief conference – With this option, the applicant cannot include claim amendments or have more than five pages of arguments regarding specific legal references. Two other examiners along with the one who issued the final office action review the request. If the examiners disagree with the request, the application moves to the next step in the appeals process. If the examiners agree with the request, the USPTO issues a notice of allowance or a new office action.
• File an appeal brief – Alternatively, the applicant can file an appeal brief within two months of filing their notice of appeal. The examiner responds with their own brief responding to the applicant’s brief. The applicant can also reply to that brief. The applicant can also request a hearing in front of an impartial panel of examiners, but there is a fee for requesting the hearing.

Even if the applicant files an appeal, they can still file a response to the final office action. 

6. File an Application for Continuation or Continuation in Part

The applicant can request a continuation or continuation in part application, which are technically new applications that are based on the current application. 

7. Abandon Your Application

Applicants always have the option to abandon their application at any time. The applicant can simply take no action for the application to expire and become abandoned. There is no fee for this.

There are many possible responses to a USPTO final office action. A knowledgeable trademark attorney can explain your options and make recommendations about which course of action to pursue. They can discuss your goals, such as obtaining a trademark as quickly as possible or having the broadest protection possible, and determine which course of action is most appropriate. Each option has distinct advantages and disadvantages that you should carefully consider. 

An experienced intellectual property attorney from Amini & Conant can advise you, based on various factors, such as:

• Your specific goals
• The current progress
• How long your case has been pending
• Preference regarding payment of fees
• Strength of the current arguments and the current rejections

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