Receiving a Final Office Action from the USPTO (US Patent and Trademark Office) can feel like hitting a wall in the patent application process. However, “final” does not mean the end of the road. Several paths remain available to obtain patent protection, and selecting the right strategy depends on the specific circumstances and goals.
What is a Final Office Action?
A Final Office Action is the Examiner’s second substantive rejection of a patent application. The USPTO issues this action after considering a response to a Non-Final Office Action, when the Examiner maintains that at least one claim remain unpatentable. While the action is labeled “final,” it marks a procedural milestone.
Option 1 – Requesting an Amendment After Final
The most immediate option involves filing a response within the statutory period, typically three months from the mailing date of the Final Office Action. Unlike responses to Non-Final Office Actions, the ability to amend claims becomes restricted at this stage. Under 37 CFR 1.116, amendments after a Final Office Action must place the application in condition for allowance or must be so narrowly focused that the Examiner can address them without further search or consideration of new issues.
Patent examiners are reluctant to perform substantive work after a final office action because of the limited time they are allotted for such a response.
That said, this varies between examiners. A discussion at this point is often helpful, and examiners will commonly Grant an interview.
If an amendment after final is filed, the examiner may enter the amendment and respond with a Notice of Allowance, or may issue an Advisory Action explaining why the amendments do not overcome the rejection or are not entitled to entry.
Option 2 – Filing an RCE (Request for Continued Examination)
A Request for Continued Examination (RCE) under 37 CFR 1.114 reopens prosecution. In conjunction with filing an RCE, the relevant fee must be paid, and a substantive amendment provided.
The RCE allows the Examiner to conduct additional searches and consider broader amendments than would be permitted in a response to the Final Office Action. Many applicants choose this path when they need room to adjust claim scope or introduce new arguments that require substantive examination.
Option 3 – File a Notice of Appeal With Request for Pre-Appeal Brief Conference
Filing a Notice of Appeal with a request for a pre-appeal brief conference under MPEP 1204.02 offers a middle ground between continuing examination and pursuing a full appeal. This procedure prompts a panel of examiners, including a Supervisory Patent Examiner, to review the rejection before an Appeal Brief becomes due.
The pre-appeal brief conference requires filing a Notice of Appeal along with a brief request of no more than five pages. The request should explain, in a clear and simple manner, why the rejection should be withdrawn.
The request is reviewed by the examiner, their supervisor, and a third-party examiner. The panel may issue one of several outcomes: a Notice of Allowance if the panel agrees the claims are patentable, a new Office Action reopening prosecution if amendments or further examination would advance the case, or a decision to proceed with the appeal if the panel finds the rejection proper.
The applicant should be prepared to proceed to appeal in the event panel the sides that the rejection is proper. That said, I have had such panels reopen prosecution, providing a more cost-effective way to attempt to reach resolution.
Option 4 – Proceeding With an Appeal
An appeal includes a review by the Patent Trial and Appeal Board (PTAB). This path makes sense when you believe the Examiner erred in applying the law to the facts, but the claim scope itself should not change. An appeal requires filing a Notice of Appeal, followed by an Appeal Brief presenting argument, and potentially an oral hearing. The examiner will respond to the appeal brief, presenting their argument.
The PTAB reviews the Examiner’s rejections de novo and can affirm, reverse, or enter new grounds of rejection. The appeal process typically takes one to two years from filing the Appeal Brief to receiving a decision.
Appeals work best when the dispute centers on claim interpretation, the proper application of prior art references, or legal questions about patentability requirements.
Strategic Considerations
Selecting among these options requires evaluating several factors. Consider the strength of the Examiner’s rejections and whether you agree with their interpretation of the prior art. Evaluate whether claim amendments would overcome the rejection and whether those amendments would still protect the commercial product or method. Account for budget constraints and the time value of obtaining a patent sooner versus later.
The key lies in making an informed choice rather than defaulting to any particular path. Each Final Office Action presents a unique situation, and the right response depends on the specific technology, the prior art landscape, the business objectives, and the prosecution budget.
Justin Miller is a solo patent attorney. In 2025 he started his own law firm, Distinct Patent Law, after nearly 15 years of practice. His firm is located in Saint Petersburg Florida. He serves clients in Tampa Bay, and because patent law is federal, can file patent applications for clients all over the United States.