More on MPEP 2107.04 - Re-opening Prosecution After Appeal

There has been considerable discussion of late related to the Office’s practice of re-opening prosecution responsive to a convincing appeal brief under MPEP 1207.04. We have more on this issue to come in future posts, but today we discuss a related issue related to amendments after final, which is a follow-on from our previous post on re-opening prosecution.

There are several avenues to pursue prosecution after final. The AFCP 2.0 is a great option to consider if you have a reasonable examiner since it gives the examiner an incentive (allotted time/points) to consider amendments without an RCE. There is also the more general after final amendment practice which can be useful to pass allowable subject matter to issuance after a final rejection, again without requiring an RCE. But what about when an appeal is likely or already in progress? That is when things get a little more tricky.

MPEP 1207.04 Reopening of Prosecution After Appeal (emphasis added below in bold)

The examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to appellant’s brief. A new ground as used in this subsection includes both a new ground that would not be proper in an examiner's answer as described in MPEP § 1207.03, subsection II and a new ground that would be proper (with appropriate supervisory approval) as described in MPEP § 1207.03, subsection III. In deciding whether to reopen prosecution or to add a new ground of rejection to an examiner's answer where proper under MPEP § 1207.03 et seq., examiners and their supervisors should consider the degree to which the rejection previously of record is being changed, any previous reopenings after appeal brief, and the overall pendency of the application. The Office action containing a new ground of rejection may be made final if the new ground of rejection was (A) necessitated by amendment, or (B) based on information presented in an information disclosure statement under 37 CFR 1.97(c) where no statement under 37 CFR 1.97(e) was filed. See MPEP § 706.07(a). Ordinarily any after final amendment or affidavit or other evidence that was not entered before must be entered and considered on the merits as part of the action reopening prosecution. Where more than one after final amendments that conflict with each other were filed, e.g., the same claim is replaced by more than one amendment with new proposed claims of differing scope, than the first amendment should be entered and the subsequent amendments should not be entered.

Forgetting the caveat “ordinarily” (which seems to give the Office discretion for no clear reason), the second to last sentence of MPEP 1207.04 controls the situation where a amendment after final that was not entered must now be entered upon the re-opening of prosecution. Before getting into this, the basis rule of amendments after final not being entered is relevant. 37 CFR 1.116 governs the issue of amendments and affidavits or other evidence after final action and prior to appeal. The rule provides three options of what must be entered after a final rejection:

(1) An amendment may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action;

(2) An amendment presenting rejected claims in better form for consideration on appeal may be admitted; or

(3) An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented

To understand how this plays out, an illustrative example is helpful. Consider an application under final rejection where the applicant believes a simple amendment could move the case forward, and so tries doing so with an after final amendment. The examiner then refuses entry of the amendment, usually stating that it would require a further search or some like that. The applicant then determines that an appeal is the best chance because, even without the amendment, they believe the rejection is improper. Upon receiving the appeal brief, the Examiner realizes the rejection is improper but still wants to reject the application and so re-opens prosecution. However, now, with the applicant’s approval, the examiner must now enter the applicant’s after final amendment and examine the updated claims when issuing a new rejection (which should be non-final).

So, what this means is that as part of the after final analysis, particularly when evaluating appeal options, consider how an after final amendment (even if not entered before the appeal) could be used advantageously after a re-opening after the appeal. Often it is somewhat predictable that the case will be re-opened after filing an appeal brief (e.g., when the rejections have blatant flaws) and thus the applicant can get a head start on the follow-on prosecution. While the fundamental unfairness of MPEP 1207.04 persists in enabling re-opening of prosecution to evade appellate review, the applicant should use every strategic advantage possible to make the best of an unfair situation.