What is Advisory Action and how to navigate its response?

USPTO Advisory Action deadline

Definition of Advisory Action

For an inventor, patent prosecution is like a hurdle to get a patent grant since it decides the fate of the patent application. When a patent application is filed, USPTO issues a Non-Final Office Action as a first substantive Office Action. If the Examiner is unconvinced by the the Applicant’s response to the Non-Final Office Action, a Final Office Action may be issued. But if the Examiner is unconvinced with the Applicant’s response to the Final Office Action as well, the Examiner may issue an Advisory Action.

Typically, USPTO issues an advisory action when the response to the Final office action is not accompanied by a request for continued examination (RCE). An advisory action is not a rejection (unlike an Office Action). It is a concise communication from the USPTO examiner explaining the crux of the rejection and the pain-points that need to be addressed. Essentially, the examiner indicates that they are not convinced that your arguments or amendments have addressed their concerns sufficiently for the patent application to be granted. They’re essentially saying, “Hey, your path’s a bit off, here’s some guidance.”

There are Several scenarios can trigger an advisory action:

  • Unconvincing Amendments: You revised your claims, but they still don’t meet patentability requirements due to lack of novelty or non-obviousness.
  • Unconvincing Arguments: You presented arguments (without any amendments) to respond to the Final Office Action, but they weren’t compelling enough to convince them.
  • Incomplete Response: You missed addressing key points raised in the Final Office Action, leaving the examiner with doubts.

Response to Advisory Action

Below are some ways you can respond:

  • File an RCE: Filing an RCE re-opens the prosecution that was closed after the Final Office Action issuance. You can conduct further research, refine your arguments, and submit revised amendments.
  • File an Updated Response with RCE: You may file a response with an RCE to better address the Examiner’s concerns in the Advisory Action. This increases the probability of getting the claims allowed as opposed to file only an RCE without filing any response. But be sure to tailor your arguments and amendments to the examiner’s feedback.
  • File an Appeal Brief/Pre-Appeal Brief: If you believe the examiner’s decision is wrong, you can challenge it through an appeal. Weigh the costs and benefits before embarking on this legal battleground.

What is the timeline to respond?

The time to respond to the Advisory Action is based on the Final Office Action’s mailing date.

The Final Office Action will typically give the inventor three months to file a response without payment of an extension fee. But they can still file a response after that time with the payment of progressively higher monthly extension fees up till six months from the mailing date of the Final Office Action.

Depending on the date on which the Advisory Action is issued, the due date to respond is the next (nearest) due date on which a response to the preceding Final Office Action should have been filed. In other words, the due date for responding to the Advisory Action is counted from the mailing date of the Final Office Action.

For example, if the Advisory Action is issued before 3 months from the mailing date of the Final Office Action, the due date to respond to the Advisory Action is the 3-month due date from the mailing date of the Final Office Action. There is no extension fee applicable because the Advisory Action can be filed within the 3-month shortened statutory period.

If the Advisory Action is issued beyond the 3-month mark from the mailing date of the Final Office Action but before the 4-month mark, the due date to respond to the Advisory Action is the 4-month due date from the mailing date of the Final Office Action. A 1-month extension fee is applicable here even though the USPTO issued the Advisory Action beyond the 3-month mark.

Similarly, if the Advisory Action is issued beyond the 4-month mark but before the 5-month mark from the mailing date of the Final Office Action, the due date is the 5-month mark and a 2-month extension fee is applicable.

If the Advisory Action is issued beyond the 5-month mark but before the 6-month mark from the mailing date of the Final Office Action, the due date is the 6-month mark from the mailing date of the Final Office Action and a 3-month extension fee is applicable.

The take away here is that once you receive a Final Office Action and plan to respond to it without filing an RCE, you should file the response at the earliest possible (preferably within 1-2 months of receiving the Final Office Action). This would increase the probability of USPTO issuing the Advisory Action before the 3-month mark, which would prevent or at least minimize extension fee. The later you file the response to the Final Office Action, the later the Advisory Action gets issued and higher is the extension fee you incur.

What is the cost of responding to Advisory Action?

The cost to respond includes USPTO official costs and your Attorney fee (varies according to the Attorney engaged). Depending on your entity status as per USPTO-defined entities, the following costs are applicable (as on the date on which this article is published).

Response to Advisory Action

You may accordingly add-up the USPTO costs and your Attorney costs to arrive at a cost estimate.

Do comment below if you have ever received an advisory action and how did you respond to it.

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