Maiorana Patent Law, PA

What is an Advisory Action?

We did some interviews discussing the overall process for filing a patent application. I remember one interview that explored the details of maintenance fees (discussed here). Another explained the details of a notice of allowance (discussed here). Are there any other types of office actions (discussed here) that get sent?

Chris: Yes, there are. Sometimes we overlook some of the, well not really easier transactions, but rather smaller transactions. One important transaction the Patent Office mails is called an advisory action.

That sounds kind of funny, an advisory action. Is that the same as an office action? Why do they use the word advisory?

Chris: Yes, it does sound a bit strange. We did a podcast interview on the final office action (discussed here) and I mentioned the Patent Office doesn't necessarily need to consider remarks and amendments made after the mailing of a final office action. They use the word final to basically keep track of the Examiner's counts. The counts are how the Examiner gets paid. In a way, they're on commission. They have to get so many counts per pay period. The Patent Examiners get that based on mailing a first action and mailing a potential final office action. We can really help as the best patent attorney in Macomb County MI.

An Advisory action normally explains why the Examiner is not entering the amendment that was presented, so they are advising us on the Patent Office's unwillingness to enter our previous amendment.

The Examiner has a choice whether to enter an amendment, or not?

Chris: He has a choice when it's a final office action that's pending. If the office action is non-final, the Examiner needs to enter the amendment because the applicant has the right to amend one time.

Wait a minute. You say you can only amend one time, but we discuss an amendment after final. This is pretty confusing. There must be a catch, right?

Chris: There's always a catch with the Patent Office. After the final office action or amendment, the Patent Office does not have to enter the amendment. But they’ll enter the amendment if we pay a fee for what's called a request for continued examination, or RCE.

So, you basically pay the Patent Office for another bite of the apple, is that correct?

Chris: As some of the Best Patent Attorneys in Silicon Valley CA (discussed here) , we use the second bite of the apple as an analogy all the time. We like to avoid an RCE if we can, but sometimes it's necessary because you get to the point where either you have to amend the claims a second time, or you need to go to an appeal. We did a podcast interview on the appeal process and it's expensive. We need to make sure everything's in order, so we need to balance the cost of paying the Patent Office to review a second amendment, or move to the appeal process. That's one of the balances we make.

You can always ask one of our Affordable Patent Attorneys for additional information. Please call us at MI - 586-498-0670 or CA - 408-890-6549