Splitting the Advisory

We recently uploaded an informal video about prosecution after a final Office Action from the USPTO.  The video touches on key issues like cost, timing, and requirements of different after-final procedures.  The video is mostly informative, because after-final practice often involves complex strategy.  As an example, let’s consider an older strategy.

After a final Office Action, US patent attorneys sometimes file a response in which two independent claims are treated differently.  For example, the Applicant might amend one independent claim (“Claim A”) to incorporate a dependent claim and then argue the patentability of Claim A.  The Applicant also argues the patentability of another independent claim (“Claim B”) differently.  Typically, Claim B is not amended.  However, the Applicant could amend Claim B to incorporate a different (i.e., unrelated) dependent claim.  This strategy is sometimes called “splitting the Advisory [Action].” 

The Examiner must consider the different approaches to each of Claims A and B.  Thus, unless both Claims A and B are placed in condition for allowance, the resulting Advisory Action should consider the two claims independently.

For example, assume the final Office Action rejects Claims A and B over a new reference.  The Applicant can present arguments about how unamended Claim B distinguishes over the new reference.  If the Examiner disagrees, the Advisory Action will explain why.

In addition, the Applicant can present arguments about amended Claim A.  If Claim A is allowable, Applicant might be able to place the application in condition for allowance (e.g., by analogously amending Claim B or canceling Claim B), without a Request for Continued Examination (RCE).  If Claim A is not allowable, the Advisory Action again will explain why.

Thus, the Applicant can receive the Examiner’s consideration of two different options without the scheduling pressure of filing multiple after-final responses.

In addition, the Applicant can better assess how to proceed with prosecution.  Maybe an independent claim narrower than amended Claim A is not worthwhile to the Applicant.  In this case, the Applicant might proceed with an appeal based on the unamended claims.  The appeal can address the arguments in the Advisory Action against Claim B.

On the other hand, the Applicant can file an RCE with an Amendment that addresses the Examiner’s view of amended Claim A, such as with additional claim amendments.  Thus, the Applicant can promote prosecution more efficiently than a typical situation of (i) filing arguments after the final Office Action (such as those to unamended Claim B), and (ii) then filing only minor amendments (such as those to amended Claim A) with the RCE.

If Modal can help you craft a suitable after-final strategy, please contact us.

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