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New USPTO Guidelines Expanding Ability of Examiner to Issue First-Action Final Rejection

by Chris Kang

The USPTO has expanded when a first-action Final Office Action can result for continuing applications and requests for continued examination (RCEs) by amending the Manual of Patent Examining Procedure (MPEP) Section 706.07(b).[i]

Previously, MPEP 706.07(b) only allowed first-action final rejections of continuing applications and RCEs when all claims were drawn to the same invention in the earlier application.

But under the newest revisions, the USPTO may now issue a first-action Final Office Action when the claims of a continuing application or RCE are either identical to or patentably indistinct from the claims in the previous application. Thus, it is now easier for an Examiner to make the first Office Action after the filing of a continuing application or RCE final. 

Typically, the initial filing of patent application provides the application two series of Office actions to argue the merits of his or her claim. When an applicant cannot sufficiently persuade the examiner after the first non-final Office Action, the examiner frequently issues an Office action notifying the applicant that the rejection is now final.

However, a “final” Office Action is misleading in that the applicant could continue to prosecute the patent by filing a continuing application or an RCE, which usually permits the applicant another two Office Actions. [ii]

Consequently, the new USPTO guidelines expanding the scope of rejections may result in a higher of applications during prosecution. While there is no limit to the number of RCEs that may be filed, the applicant may be limited by the filing fee associated with each additionally filing.[iii]. Combined with recent increases to the USPTO’s Fee Schedule effective October 2, 2020,[iv] the lower bar now set for first-action rejections could become increasingly costly for successive applications.

[i] https://www.uspto.gov/web/offices/pac/mpep/mpep-0005-change-summary.html

[ii] MPEP § 706.07(h)

[iii] MPEP § 706.07(h)

[iv] https://www.uspto.gov/about-us/performance-and-planning/summary-fy-2020-final-patent-fee-rule