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Good day and welcome to the Patently Strategic Podcast, where we discuss

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all things at the intersection of business, technology and patents.

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This podcast is a monthly discussion amongst experts in the field

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of patenting. It’s for inventors, founders and IP professionals alike,

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established or aspiring. In this episode, we tackle the near death experience

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of a final rejection.

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That’s the sound of your application receiving a final rejection notice

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from the patent office. But how final is final? The office owes

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you nothing at this point, and without further action, your patent is as good as

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dead. Good news, though. All may not be lost.

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Options for resuscitation are limited, but the patient isn’t a goner

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yet.

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David Jackrel, President of Jackrel Consulting,

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leads a discussion along with our Allstar Patent panel. Digging into the specifics

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of after final practice or AFP. After final practice is one

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of the three primary options for getting a patent application on life support and

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breathing again. But it has the unique combination of being lesser known but

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also requiring the least effort and expense, making it a wonderful target

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for a strategy discussion. The insider tips on best practices for working with

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examiners during this process are worth the listen alone.

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David is joined today by an exceptional group of IP experts,

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including Ashley Slot, President and director of patent strategy here at Aurora

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Consulting. Daniel Right, partnership manager and patent strategist here at

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Aurora, Steve STUP, partner at Stuff Associates LLC. And Dominic Felice,

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patent expert at Pearl Analytics Inc. Now, before handing this over to David

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in the panel, we’re going to break our normal form a little. After reviewing the

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conversation, we decided that some extra upfront context might be helpful

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for our broader audience. For that, I’m joined by Ashley Slot to

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help us with some stage setting. Alright, Ashley,

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first question, what is a final rejection?

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Thanks, Josh. When you file

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your patent application with the Patent Office and it is finally picked

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up by an examiner, the examiner does a search.

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And during this process is called prosecution, where the examiner does searches,

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you amend or edit your claims, make arguments, and then they

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do updated searches, and then you may amend or make arguments again.

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This whole process is called prosecution. And so during the

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activity of prosecution, you get rejections. And usually

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a final rejection comes after your claims have

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already been once rejected. Now sometimes you can

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get a second non final rejection, and that’s

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if maybe the art wasn’t appropriate,

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maybe the examiner fully missed the Mark. Or maybe sometimes

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you fully overcome the rejections. And it’s a new set of rejections.

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But that is quite rare. So usually the final rejection

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comes when your claims have already been rejected one.

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And so now they’re being finally rejected. And that final rejection represents

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the close of one round a prosecution.

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Okay, thanks. So as you alluded to, the word final

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obviously indicates that this wasn’t the first rejection.

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How common is it to get one or more earlier rejections

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from patent offices during the prosecution of an application.

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Yeah. So I would say it’s highly common to get at

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least one rejection, and if not even get two. And that

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represents one random prosecution. You have a non final rejection,

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and then depending on if you just make arguments, the examiner

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will not conduct another search. Instead, they will just review your arguments

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and see whether you have swayed him or her. If you make

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a minute to your claims, that will then encourage them to do another

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search. And then during that second search, they may find additional

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references are that they can use to reject your claims. And so then they

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send you a final rejection. And if,

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for example, you still have not overcome the or maybe the examiner

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is unconvinced, or maybe you haven’t gone far enough with your claim amendments,

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then you may be kicked into a second round of prosecution. Or there’s

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a few other things that can do that will obviously be talking about here today.

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And so you can go through multiple rounds of prosecution, and then

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two, I guess. Then sometimes it is said you can

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get a first notice of allowance, first action notice allowance, where you

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send you never get rejections. And sometimes that can be good for

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a startup that just needs a patent. Quick. Maybe the claims are slightly

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more narrow and you get that first action allowance. But more

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often than not, if you get that first action allowance, no rejections,

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then maybe you didn’t ask for enough in your claims. Right. Maybe your claims could

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have been broader, but sometimes when that happens, it’s better just

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to take what you’re given and run, and then through a continuation

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through a second application, then broaden

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out your claims to get more scope, more breath. And so there’s lots of

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different strategy pieces you can put into place there, whether or not you get a

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first rejection or first allowance. So we specifically

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delve into after final practice or ACP two0 program in

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this episode as a means of trying to deal with a final rejection. But it’s

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not the only approach for dealing with a final rejection. Could you really

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describe the three main options, how they compare and when

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AFC makes the most sense versus the other two?

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Yeah. So when you get to that final rejection,

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as we described, you can either appeal the decision,

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which means that you basically send it to the patent trial, an appeal board,

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or the P tab for them to weigh in on the

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rejections and the arguments. So they can wait in favor of

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the applicant, or you making way in favor of the examiner, or they

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can wait in favor of both of you. In some shades, there is also

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the request for community examination or RCE that I alluded to,

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which basically you pay additional night to the patent office for

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them to review your application again in a second round of prosecution.

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So again, another another final, or hopefully you

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get it through quite quickly. And then, of course, there is the after

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final consideration program. In terms of

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how to compare. I would say appeal is best suited

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for you really hit a wall with the examiner, but you

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really think you have a solid case because

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it is a long process and it can be somewhat expensive just from the appeal

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fees and then the preparation of the appeal brief and the responses.

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And then from a request for continued examination,

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you’re paying an additional fee for the Pen office to do their job

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again. Right. Because they’re going to do another search. Again, the examiner is going to

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reject it again or hopefully allow it. But sometimes you do just need

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to pay that extra fee to kind of get the exam to

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review it again, and then they might allow it right away. And that has definitely

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happened because the after final consideration program only allows the

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examiner so much time to review things after final. And so sometimes

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they just needed to pay that fee so they can spend more time and then

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kick it to allowance. It sounds really silly, but they all have time

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that they’re allotted to do different things. And if it’s going to extend beyond that,

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then you have to pay the additional fee for after final consideration chip program.

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These are very specific requirements. This is not something to be

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used as a all the time. It’s really for

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those amendments that are very clearly going to put the application in condition for

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allowance. They’re not going to they’re not broadening at all,

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because if you brought in the examiner for sure is going to have to do

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another search, and that will be too much time for them to spend. And they’ll

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want you to do that request for community examination. And I would definitely

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base it on conversations that you had with the examiner where you said, well,

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if I just do this little tweak, it would be allowed. And he has to

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be like, yeah, you’re pretty sure make it. And we’ll see. But those are the

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situations where it’s like just fine tuning things

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that you want to do. The ACP for. If it’s anything that’s extensive,

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extensive amendments, amendments, or anything like that,

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it doesn’t make sense to waste your time with ASP. And it just

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makes sense to pay that RCE fee and go to the next run of prosecution

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or maybe appeal. But your practicer should know, like I said,

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it’s not, you know,

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ASCP is a very unique case to when you want to use that. It’s not

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an all the time sort of approach. So some of

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the main ways that set appeal, a request for computed examination and then the

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after final consideration program in your

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practice, or maybe even more more broadly, I don’t know if

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there’s data available on this, but once somebody gets

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to this point of a final rejection.

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Any idea roughly what percentage

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of apps that use one of these pathways

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still end up with some

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angle of patentability? Just roughly, how successful

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are these three paths? Yeah. And I don’t notice that on

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that, but it is highly art unit dependence. So when your application

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goes into the patent office, depending on the technology that’s in the

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claims, it’s going to be trapped into an art unit where it has

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examiners that are skilled in that kind of technology.

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So whether it be business methods or semiconductors or

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chemistry, it’s going to be tracked into that art unit. And every

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art unit has its own statistics around what

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their allowance rate is, essentially. So I don’t know how I’m sure

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they have specific somewhere, whether we’re privy to that or not. I’m not

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sure, but they

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have statistics around their allowance rate. So I would say most art

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units you’re going to find are probably somewhere in the 50% to 80%

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allowance rate. Now, some art units, like different software

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art units or business method art units, they’re going to be a lot lower because

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of everybody knows the Alice decisions and all the software issues that we’ve had

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to date. But I would say most allowance rates are going

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to be in that 50 to. And it also, though, is dependent.

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I would argue that you can almost always get an

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allowed claim fit, but the more

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the tougher your route through

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prosecution, the more likely you’re going to end up with more

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narrow claims. And so it’s this balance of value and

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a balance of breath, right. Because somewhere in between those

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two worlds is your claim set or the value of your claim set.

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And so for some startups, it’s really just getting that patent. So if it’s a

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little bit more narrow, at least at the outset, that’s fine. Then we’ll go back

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for broader claims later. But for some other companies, they really need that

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breath, or maybe their technology war in that breath. And so then you may

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fight a little bit more, pay a little bit more money to maybe try and

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get that broader claim at the outset. There’s also the increased risk that

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maybe you can’t, and you end up not in that

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allowance category. Even if you’re in that

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category, there are additional stuff that you can do to kind

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of research the clock in different ways. So not all is not lost.

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But I would say most our units are in that it even examiner

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by exam dependent. Right. But that’s where I think we

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always encourage the clients and ourselves to talk with examiners during

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after non final when you do have the right to an interview. Because a lot

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of times examiners, they’re humans, too, and they just

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need they need to be understood. They need to

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understand where you’re coming from. You need to understand where they’re coming from.

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And time. It’s just certain words that their misunderstanding or

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certain words that they like to see that can get to allowance.

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And so, again, we’re all humans, and so sense that human interaction

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is the thing that can make the difference. Okay. Fantastic. So if

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I’m understanding correctly, then these mechanisms can be highly

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effective in getting something over the finish line, but can

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oftentimes come with the compromise of getting more

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narrowed coverage than what you originally originally after,

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for sure. Yeah. I mean, there’s not

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to say that there isn’t, but once you kind of find out what the examiner

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is going to claim to. Right. What is the patentable

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thing of your claims and which you’ll find out during prosecution? Right.

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Whatever the amendments that you’re making, those are the things that are going

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to sway the examiner. Right. So once you pinpoint which amendment or

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amendments were the thing that sway the examiner, in theory,

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all the other stuff in the claim could be brought out. Right. Not crazy,

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but Broughten out to some degree because you’ve now found the Lynch pin

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that the examiner is going to claim to. And so that’s kind of that

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you kind of start to build a report with the examiner relationship with the examiner,

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too. So they know that you’re not trying to skate one by them

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or to be shady. They understand that you’re trying

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to keep the patentable piece that maybe brought

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up other elements that maybe don’t need to be as Nero. And like I said,

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you can do through continuation practice, where you pursue additional

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claims that in additional applications that still are within

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that same family tree of your original application. All right. Thanks, Ashley.

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Very helpful. Now, without further Ado, take it away, David. So after

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final practice, this is going to be really short. It was mainly

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I have not done a lot of these, and I wanted to learn about it.

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That’s why I took the VILG course. And then I thought there’s

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some interesting tidbits, but that other people might

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be interested into. But it’s not not that the media have a

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topic, so I won’t try not to bog down and just

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kind of introduce these things. But at the same time, if anybody had any stories

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to share or questions or whatever, feel free to to

13:25.590 –> 13:28.970

jump in. Start with the traditional. This is all

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after a final rejection. So after a final rejection, of course,

13:32.300 –> 13:35.870

basically, prosecution is closed and your options are limited.

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So after final amendments are allowed, and what

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they have to do in the traditional after

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final amendment is either place the application

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and condition for allowance or in better form for appeal.

13:51.370 –> 13:54.870

So let’s say you got

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a first action. You made a bunch of amendments, the independent claims were all rejected,

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but some of your dependent claims were allowed.

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Typically, I would imagine it’s

14:06.280 –> 14:09.840

possible, but typically examiner wouldn’t do that by examiner amendment because

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they don’t want to make that decision right for the client. So that would

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be in a very appropriate place for an after final amendment. All you’re doing is

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saying, okay, we want to change this claim dependent claims to be an independent

14:21.220 –> 14:24.420

form, and it would be allowable, but it’s not allowable now.

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So you don’t have the RCE to get that kind of thing done or

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obviously get a better form for appeal canceling claims

14:32.920 –> 14:36.570

you don’t care about fixing maybe some 112 issues

14:36.580 –> 14:41.020

that may have popped up, things like that. It allows both asking to

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clarify the record essentially. And then after submitting

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filing your after final amendment, you get an advisory

14:50.970 –> 14:55.210

action, and the advisory action is going to be less formal than complete

14:55.900 –> 14:59.530

office action, but still

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can be really helpful, as they say here,

15:03.390 –> 15:07.360

to make a decision deciding whether you want to go up the RCE

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or appeal route, or even maybe a band, depending on what the examiner

15:10.790 –> 15:14.920

says in that advisory action. So then it’s

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not so new anymore, but relatively new is this after

15:19.350 –> 15:23.170

final consideration program CPT,

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which is currently going it’s been extended through September,

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and I think everyone believes it’s going to be extended beyond

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that as well. This basically

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allows a little bit more time for the examiner,

15:37.580 –> 15:41.200

so it’s decided where response to a final rejection will likely lead to

15:41.210 –> 15:44.530

an allowance with only limited further searching and

15:44.540 –> 15:48.250

or consideration. This is beyond what would normally be

15:48.260 –> 15:52.180

allowed in an after final amendment, and you can specifically

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apply for this a CP two point program.

15:57.140 –> 16:00.470

Give the exam are a little bit more time if it is eligible.

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So what you need to do is amend at least

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one independent claim in a non broadening way.

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Interesting, it says non broadening and not limiting.

16:11.640 –> 16:15.070

I think there is a little wiggle room there,

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but then you have the form

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as well as a statement that you’re open to an interview,

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which is sort of for the processes we’ll see in the next couple

16:26.410 –> 16:30.300

of slides. There’s a little flow chart. The decision about

16:30.310 –> 16:34.050

whether something is eligible for this, a FCP two0 is

16:34.060 –> 16:38.190

in the judgment of the examiner solely. They should

16:38.220 –> 16:41.940

basically determine if further consideration can be completed in the

16:41.950 –> 16:45.960

allotted time. And I think if not many

16:46.140 –> 16:49.830

people recommend kind of calling the examiner, this is what we’re

16:49.840 –> 16:52.770

planning to do, and this is the event that we’re thinking about.

16:52.780 –> 16:56.100

Would this be eligible and then talk to the examiner about it upfront?

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And then maybe they can help you figure out what would be in scope and

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what would be out of scope for such a thing,

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even if the AFC two0

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request is admitted accepted. So then the

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examiner does this additional consideration or enter

17:13.150 –> 17:17.220

searching, then the amendments may or may not actually

17:17.230 –> 17:20.400

be entered. This is an interesting little point. I guess if

17:20.790 –> 17:25.020

the claim and ments resulted a notice of allowance, then they

17:25.520 –> 17:29.520

will enter them and allow the application. If the amendments

17:29.550 –> 17:33.270

after the examiner searches after considers decides no the

17:33.280 –> 17:36.870

prior art teaches these proposed amendments, then not only is

17:36.880 –> 17:39.990

it not allowed, but those amendments are actually not even entered.

17:40.260 –> 17:44.010

So then you would be back to where you were at the

17:44.020 –> 17:47.420

final protection at that point. Hey, David, quick question.

17:47.430 –> 17:50.990

I don’t know if they may have experience with this or if they covered

17:51.000 –> 17:54.690

this at some point, but you know, historically,

17:54.700 –> 17:58.050

my understanding is that when things were sent via Fax, those things

17:58.060 –> 18:02.040

were not entered. But nowadays, more and more email correspondences happening

18:02.050 –> 18:05.820

between examiners and practitioners to where you could send proposed

18:05.830 –> 18:10.570

amendments in that situation would

18:11.070 –> 18:14.830

if you send via email, for example, or even fact, I think they were rendering

18:14.840 –> 18:18.090

them even from facts at this point. They may not enter them in the sense

18:18.100 –> 18:22.560

of the claims. Like that’s the most current state of the claims, but those amendments

18:22.570 –> 18:25.330

would still be found in the file. Rapper Right.

18:25.340 –> 18:26.980

They just don’t like,

18:28.110 –> 18:31.300

I don’t know, is more of like a question.

18:31.310 –> 18:35.150

It’s a statement. Pretty sure that you’re right that official communication

18:35.650 –> 18:39.290

factors and emails being the two examiners

18:39.790 –> 18:43.250

are kept in the file wrapper. I’m pretty sure about

18:43.260 –> 18:46.460

that, but I’m not 100%. I know. Like, for instance,

18:46.470 –> 18:50.090

you can email or Fax a interview agenda,

18:50.240 –> 18:54.080

and those are definitely in the file wrapper. I don’t know about

18:54.170 –> 18:56.690

any email or Fax communication,

18:57.560 –> 19:01.420

but I think like you said, unless it’s

19:01.430 –> 19:05.100

an actual amendment file amendment,

19:05.760 –> 19:09.300

they won’t be entered unless you ask

19:09.310 –> 19:13.410

the examiner to do something by examiner amendment. It’s definitely

19:13.420 –> 19:17.280

been in that situation where the examiner is found upon. So basically,

19:17.580 –> 19:20.850

most often it’s kind of like something’s going right to allowance and the examiner will

19:20.860 –> 19:24.300

call and be like, I had a few emphise basis thing cloud box,

19:24.310 –> 19:27.390

do you want me to do the by examiner amendment? Just feed it along

19:27.400 –> 19:31.220

or something like that, you know? And then yeah, I’ve gone through with them

19:31.230 –> 19:34.820

on the phone, sometimes as many as five or ten different

19:34.910 –> 19:38.510

things, and sometimes they mess them up. So having

19:38.520 –> 19:41.600

an email or something like that in that case, I think would be helpful to

19:41.610 –> 19:45.050

request, like, an examiner amendment, and then maybe they would get entered.

19:45.550 –> 19:48.850

But I’m not sure. And I appreciate

19:48.860 –> 19:52.390

that. It just makes you wonder then two from, like even the case that they’re

19:52.400 –> 19:55.690

not under. Sorry for the background noise. We have work being done in the room

19:55.700 –> 19:59.430

next door. So even

19:59.440 –> 20:02.520

in the case where they aren’t technically entered, but if

20:02.530 –> 20:06.460

they’re in the file history, does anybody know that

20:06.580 –> 20:10.090

counts from, like, a prosecution of topple perspective because you

20:10.940 –> 20:14.690

you thought about disclaiming some of the scope,

20:15.180 –> 20:19.950

maybe because you didn’t do it, then it doesn’t count anybody

20:19.960 –> 20:23.940

else. I don’t know. I would venture

20:23.950 –> 20:27.750

to guess that it does. Still on it was something that you presented in good

20:27.760 –> 20:30.660

faith to the patent office and then for procedural reason,

20:31.240 –> 20:34.660

didn’t get entered well, again, entered.

20:34.670 –> 20:37.900

Meaning updated to the working

20:37.990 –> 20:39.070

version of the claims.

20:40.900 –> 20:45.410

Yeah, I don’t know. I’ve done a fair number of AFC

20:45.650 –> 20:49.070

two points, but they generally have kind of

20:49.080 –> 20:52.640

been. I’ve done

20:52.650 –> 20:56.000

it when I know it’s a Slam dunk, like when I had

20:56.680 –> 21:00.190

when I’ve had. Okay, option A versus

21:00.220 –> 21:04.760

option B for something. An option B is probably guaranteed, but but

21:04.770 –> 21:08.090

narrower then the client would necessarily

21:08.590 –> 21:12.020

want to go with right off the bat. So you try A that

21:12.520 –> 21:15.590

is not good enough. It will be is probably good enough. So let me just

21:15.710 –> 21:18.830

flip that in. And normally I call frequently.

21:18.840 –> 21:23.810

Also, I’ll try to talk to the examiner like sooner and

21:23.820 –> 21:28.730

then get his or her blessing and then turn it in this

21:29.300 –> 21:32.990

situation, I’m actually not so sure on I’m not sure

21:33.000 –> 21:37.280

I’ve had an AC two get rejected

21:37.290 –> 21:40.490

because I only have ever used it when we were really confident.

21:40.640 –> 21:44.210

Okay, go ahead,

21:44.710 –> 21:49.430

David. Were you going to say that you have had some recent

21:49.440 –> 21:52.790

a lot of times if they’re not,

21:52.800 –> 21:57.100

like, very narrowly fit into that little now snug

21:57.790 –> 22:00.910

opportunity? I feel like we’re watching a not they make you pay the

22:00.920 –> 22:04.450

fee. Yeah, that’s kind of good. I’ve only seen

22:04.460 –> 22:08.320

a few of them, but that’s what I’ve seen as well. If it’s really narrow,

22:08.380 –> 22:11.500

but still beyond what’s sort of allowable by the letter or

22:11.510 –> 22:15.630

two for a normal after final they’ll accepted

22:16.130 –> 22:20.030

to the SP two now and let it go. Three almost rubber stamp, but more

22:20.040 –> 22:22.970

complicated one at least one or two that I’ve seen didn’t work.

22:23.170 –> 22:26.660

But I wonder I don’t know a lot

22:26.670 –> 22:30.860

about prosecution to stop all actually, either. But I wonder

22:30.870 –> 22:34.750

if it might matter why the claims weren’t.

22:35.050 –> 22:38.980

Well, it amendments weren’t entered at that time. So if you email

22:39.010 –> 22:42.460

or Fax something, for instance, an examiner says no, this is out

22:42.470 –> 22:45.970

of scope. I’m not even going to consider it. That’s why they’re not and

22:46.570 –> 22:50.270

entered. I would imagine that doesn’t if that situation

22:50.280 –> 22:53.900

doesn’t blow forward. Right. So like in the future,

22:53.910 –> 22:57.490

if you try to do the same amendments, you wouldn’t be stopped from doing

22:57.500 –> 23:01.210

it again. If they’re going to now be examined on the merits.

23:01.220 –> 23:04.300

You know what I mean? So if it’s not been entered,

23:04.310 –> 23:06.970

it’s as if it never happened. Okay. Interesting.

23:07.500 –> 23:11.180

Yeah, I like it. And I could

23:11.190 –> 23:14.600

see how that can make sense, because even if they do their set to

23:14.610 –> 23:17.210

I know they have a limited amount of time to search. They might just be,

23:17.220 –> 23:20.330

like, kind of say no,

23:20.390 –> 23:23.870

but then given more time to search, they could have come to different conclusions,

23:23.880 –> 23:27.470

I guess. Do the examiners then give a summary of

23:27.480 –> 23:31.630

the discussions like they would for a typical interview? Because one

23:31.810 –> 23:36.250

thing I could see is if they don’t quite summarize everything that

23:36.260 –> 23:40.450

your side really agreed to, or in the

23:40.460 –> 23:44.270

same words that could want something there to correct that

23:44.280 –> 23:48.050

interpretation as well. One thing I need to educate myself

23:48.060 –> 23:51.710

on further here, too. So what they do is typically what happens is

23:51.720 –> 23:56.730

the the advisory actions kind of they

23:56.740 –> 24:00.000

will not comment on your claim amendments.

24:00.400 –> 24:04.360

They tend to just say things like sometimes

24:04.370 –> 24:08.590

they’re incredibly curse and just say, like, this raises new issues that would require

24:08.600 –> 24:12.220

further search not entered. Sometimes they’ll

24:12.230 –> 24:15.640

say that, and then they’ll give a little short few sentences.

24:15.650 –> 24:19.120

Will they say, we found this one reference because of

24:19.130 –> 24:22.240

that, I think I would need to consider this more carefully. And they’ll tell you

24:22.250 –> 24:25.630

the reference and what was relevant if they’re trying to be helpful.

24:25.640 –> 24:29.080

But they won’t sit there and say, like, you use this language and you

24:29.090 –> 24:32.470

should have used that language. They don’t really comment on what you’ve done.

24:32.480 –> 24:36.580

So when it’s not entered, it really isn’t very limiting on

24:36.590 –> 24:40.570

your future prosecution options. So it’s

24:40.580 –> 24:43.990

actually usually at worst, it doesn’t change

24:44.490 –> 24:48.220

much. And at best, you might get an interview or get

24:48.230 –> 24:51.190

something in writing that gives you a hint of where you might be able to

24:51.200 –> 24:54.810

take things. Thanks, Steven.

24:56.510 –> 25:00.690

That I’ve also seen similar kind of things. And those few that I’ve seen.

25:00.930 –> 25:04.470

There are rules as they went over for these at two point of those

25:04.480 –> 25:09.000

of the examiners and the examiners are supposed to substantively

25:09.540 –> 25:13.050

respond to any kind of substantive

25:13.780 –> 25:17.030

argument. They’re supposed to respond to all the arguments,

25:17.090 –> 25:20.450

but as you said, it’s not as formal and

25:20.460 –> 25:23.840

complete. So they focus more on analysis and

25:24.770 –> 25:28.250

cutting to the chase rather than everyone of your amendments.

25:29.690 –> 25:33.320

Yeah, but they are supposed to respond, at least in some way,

25:33.350 –> 25:36.770

to every argument that’s been raised. And if they don’t

25:37.270 –> 25:39.710

think that they can do that in the amount of time that they’re allotted,

25:39.720 –> 25:44.060

they’re supposed to say, no, this is out of scope for AFC two point not.

25:44.560 –> 25:48.320

Admitted, there’s a couple of quick

25:48.330 –> 25:52.700

things to kind of a little bit of a review, but also shows the

25:52.710 –> 25:56.240

examiner first step is just to determine whether or not it’s proper,

25:56.360 –> 26:00.080

whether or not they’re going whether it falls within the scope of ASCP

26:00.090 –> 26:03.290

two0. If it’s improper, they just say, Sorry, no.

26:03.440 –> 26:07.250

And they do the normal pre pilot, the normal after final practice.

26:09.170 –> 26:14.000

But if it is proper, the sort

26:14.010 –> 26:17.840

of say they’ll review the

26:17.850 –> 26:21.800

amendment, I guess, and go on to the actual kind

26:21.810 –> 26:25.310

of analysis. And then in their analysis, they’re granted

26:25.320 –> 26:29.180

up to 3 hours plus the ten day kind of management clock adjustment

26:29.190 –> 26:32.960

thing. And if they do find it allowable, they’ll be allowance

26:32.970 –> 26:37.760

pretty straightforward. But if it’s not allowable, then they initiate

26:37.940 –> 26:41.450

an interview. And as you remember, when you sign up for a CP two,

26:41.460 –> 26:45.260

when you apply, you commit to

26:45.860 –> 26:50.500

joining one of these interviews if asked. And then if

26:51.340 –> 26:55.450

there is no if the examiner does not want to initiate

26:55.460 –> 26:58.900

an interview, they’ll just mail this advisory action. And if they do,

26:59.590 –> 27:02.830

then they can go back again. Well, after the interview is allowable

27:03.330 –> 27:06.370

or not. And so that’s basically the flow.

27:06.910 –> 27:10.270

So just to wrap up what’s

27:10.280 –> 27:14.830

the difference? A two

27:14.840 –> 27:18.670

pointer provides more time to examiners, and they didn’t say it here, but it also

27:19.170 –> 27:23.170

an extra point, so it’s actually kind of a low

27:23.180 –> 27:26.920

hour point as far as I understand it. And examiners are a little

27:26.930 –> 27:29.620

bit motivated to take these if they can.

27:31.920 –> 27:35.470

So a relatively well known

27:35.560 –> 27:39.250

patent practitioner, I recall,

27:39.260 –> 27:43.240

told us that what they tend to do is file a traditional after

27:43.250 –> 27:46.930

final response with whatever they’re proposing to do. And then

27:46.940 –> 27:50.530

if the examiner declines to examine it, they’ll call them and ask

27:50.650 –> 27:53.830

them if that amendment that they just submitted would

27:53.840 –> 27:55.960

be eligible for this ASCP two0.

27:57.850 –> 28:01.930

As Dan was talking, I think I like his method as well,

28:01.940 –> 28:05.320

so I don’t think that’s necessarily the way to go. I do

28:05.330 –> 28:09.370

think that calling the examiner at some point before you apply

28:09.870 –> 28:13.450

for this is a good idea to help to figure out that you’re

28:13.460 –> 28:17.560

actually in scope or not, and then just

28:17.570 –> 28:21.390

as a kind of what is proper

28:21.400 –> 28:23.310

and improper for AP two.

28:23.870 –> 28:31.370

No. As compared to traditional if

28:31.490 –> 28:35.300

they’re simple amendments, just like canceling claims or

28:36.940 –> 28:40.870

making independent claims, making dependent claims into

28:40.880 –> 28:46.000

independent form. That to be done in a traditional amendment

28:46.030 –> 28:49.810

and is not an FTP to is not needed to know. I was

28:49.820 –> 28:52.510

really needed for additional searching, additional consideration,

28:53.620 –> 28:57.660

things like, so that’s

28:57.750 –> 29:01.440

all that I had. Awesome. Thanks, David. Well, if nobody has

29:01.450 –> 29:05.400

anything else, then I will set

29:05.900 –> 29:09.490

you all free, right? Nothing else here. Thank you, David.

29:09.500 –> 29:11.290

Thank you, Ashley. Yeah. Thank you both.

29:12.020 –> 29:15.150

Anything. Bye, everybody. Have a

29:15.160 –> 29:18.900

good day. All right. That’s all for today, folks. Thanks for listening. And remember to

29:18.910 –> 29:22.590

check us out at Aurora patents dot com for more great podcasts, blogs and

29:22.600 –> 29:25.920

videos covering all things patent strategy. And if you’re an agent or

29:25.930 –> 29:28.770

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29:28.780 –> 29:32.290

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29:32.790 –> 29:36.340

Patents com. Do remember that this podcast does not constitute legal advice.

29:36.350 –> 29:38.650

And until next time, keep calm and patent on.