U.S. Patent Examination Opinion Process

An attorney with extensive experience in U.S. patent agency will find that the usual situation of receiving an examination opinion is that the first OA is a "non-final OA ( non-finalOA)", and the second OA is usually "final OA (FinalOA)". The main reason for this situation is that the USPTO stipulates that the examiner can only record the examination workload for him after the final OA is issued. This means that as long as the conditions for issuing a final OA are met, the examiner will issue a final OA "without hesitation". So, what are the conditions for issuing a final OA?

In fact, the final OA is not necessarily issued after the first OA. The U.S. Patent Examining Procedure (Manual of Patent Examining Procedure) stipulates that the examiner can issue a final OA only when specified conditions are met. Specifically, the examiner is allowed to issue a final OA when one of the following three situations is met:

1. In the reply to the non-final OA, the applicant only argued and did not modify its claims, If the examiner does not accept the argument and insists on his rejection opinion, he can issue a final OA;

2. After issuing a non-final OA, the applicant submits an IDS (Information disclosure statement) for review When the examiner plans to change the reason for rejection to the IDS, the examiner can issue a final OA;

3. In the reply to the non-final OA, if the applicant modifies the claims, the examiner can issue a final OA, And in the final OA, the examiner can change the applicable laws or modify the rejection opinion.

Therefore, the applicant can consider how to formulate a strategy for responding to non-final OA based on the conditions for issuing a final OA, and try to avoid falling into the above three situations, thereby avoiding receiving a final OA, which can ensure Save applicants’ application costs to the greatest extent.