Prosecution of a patent application involves responding to Office actions by the Examiner. In general, the applicant cannot be assured that an amendment to the specification, drawings and/or claims of an application will be "entered" and considered by the Examiner after the second Office action on the merits of the application, which action is generally termed a "final action" or a "final rejection." However, an opportunity is given to request a reconsideration of the Examiner's decision or to agree with that decision after the final action. The applicant must respond to a final Office action within a specified time. If the Office action contains one or more defects, the applicant is given one month after the mailing date of the Office action within which to point out the defect(s) to the Examinier and request that the period for response be reset. Submitting such a request does not automatically mean that a complete response does not have to be filed. The response or amendment must generally be filed no later than 3 months after the mailing date of the final action, unless a different period for response is stipulated in the Office action. The period of response may be extended by up to 5 months by payment of extension fees, however, in no event can the response or amendment be filed later than 6 months after the mailing date of the final Office action.
If, for example, the applicant belatedly decides to agree with the Examiner and (1) a response period of 3 months had originally been set by the Examiner in the final action (2) a first response was filed within 2 months of the mailing date of the final action and (3) an advisory action (stating that the first response has not placed the claim(s) in condition for allowance) is mailed by the Examiner after the end of the 3-month response period, then the amendment agreeing with the Examiner may be filed up to 5 months after the mailing date of the advisory action by payment of one or more one-month extension fees. However, in no event can the amendment be filed later than 6 months after the mailing date of the final Office action.
Law - Response/Amendment After Final