Receiving a final rejection on your patent application may sound ominous. The U.S. Patent and Trademark Office, however, provides several pathways that can eliminate the finality of this decision, which may possibly result in a patent.
Role of the Patent Examiner
A patent examiner can send a final rejection with a second Office Action or any subsequent Office Action thereafter. Patent Office Action letters are written to the patent applicant to identify problems or deficiencies in the application in order to give the applicant an opportunity to correct problems. A final rejection signifies that the examiner has thoroughly reviewed the application and any amendments that you had made on their merits, and that he finds the claims unpatentable. When making a final rejection, the examiner must state all the grounds for rejection.
Several paths are open to you if you wish to contest a final rejection. You can file a response after the final rejection and try to convince the examiner to allow the claims.This approach tends to be unsuccessful, unless the examiner accidentally overlooked something. Alternatively, you can refile the application as a continuation, appeal the rejection to the Board of Patent Appeals and Interferences or file an amendment and response. If you choose to abandon the application, you will lose all rights to the invention.
If you receive a final rejection, you should consider how important this patent application is to your overall intellectual property portfolio. While pursuing the matter may result in success, pursuing an appeal can be very expensive. Consider asking a patent attorney who is very familiar with your field about costs and what obstacles must be overcome before the patent will be granted.