USPTO Encourages Prosecution After Final – Sort of

Although entry of any amendments after final rejection has always be discretionary with Examiners, for pretty much my entire career, I have had good luck continuing prosecution after final rejection – sometimes filing multiple Rule 116 amendments or making multiple calls – not really interviews – to the Examiner. I have found most Examiners willing to “continue talking” after final, and even to grant formal interviews – particularly if it is the first one in the application.

Now the PTO has formalized “Let’s Make A Deal” which is a set of guidelines that, cautiously, encourages Examiners to continue to consider post-final amendment, even if it requires some – but not too much – further consideration. Let’s hope this will lead to a more productive, less adversarial relationship, between prosecutors and Examiners, so that applicants feel less “forced” to simply give up and file an RCE.  I continue to believe that the backlog would noticeably shrink if Examiners were required to pick up the phone after receiving a Rule 116 Amendment, and not just print out the “standard” Advisory Action refusing to enter the amendment.

 

USPTO Press Release

One Response to “USPTO Encourages Prosecution After Final – Sort of”

  1. EG says:

    Warren,

    I’ve already benefited from this new policy in two related cases where the Examiner called me followng the filing amendments after final, and we agreed on what additional amendments to these Claims would move both cases to an allowable state. I would welcome more such calls.