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Patent System Q&A
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6. AFTER RESPONSES TO AN OFFICE APPLICATION
I've received a "Decision of Rejection". Is this difference to a "Notice of Rejection" office action?
Yes. If an amendment and/or argument (in response to either final or non-final office action) fails to overcome a rejection a Decision of Rejection will be issued. At this stage, applicants have two options if they wish to keep the application alive: filing an appeal and/or one or more divisional applications.
Appeal
You may submit a counterargument (an appeal brief) via a Trial/Appeal against the examiner’s decision (See Section 7 on the Appeals System.) An applicant may also optionally file claim amendments at this stage, but the conditions are more restrictive than for office actions: i.e., (i) cancellation of claims, ii) further restriction of claimed elements (i.e., limitation of claim(s) to components defined in claim(s) before the amendment), iii) correction of errors; and/or iv) clarification of ambiguous recitations (that have been rejected in the office action) .) (See also OTHER Q2: Amendments - Scope, timing and cost.)
Any cancelled claims may be revived by making divisional applications during the time period for requesting the Appeal (see below, and Section 5 on Divisional Applications.)
Divisional applications
Divisional applications can be filed with or without filing an Appeal against the Decision of Rejection. If you only file a divisional(s) without an Appeal, the parent application will effectively lapse.
Claims in the divisional application could be any claims cancelled when filing an Appeal for the parent (as mentioned above), and/or, in principle, new claims that are supported in the original disclosure, etc.
Timeframe for filing Appeal and Divisionals
Appeal briefs, optional amendments and/or divisionals can be filed within 4 months of the transmitting date of the Decision of Rejection (non-extendable) for overseas applicants. (Note that this option is not available for divisionals filed before April 1, 2007.) Applications cannot currently be kept alive once this period expires.
Other questions on Decisions of Rejection:
I only received one office action before a Decision of Rejection was issued. Is this common?
As stated above, an examiner can issue a Decision of Rejection if he/she determines that the amendments/arguments in response to an office action (including the first office action) do not resolve the rejection(s) therein. Whilst there are cases where an examiner issues a further (second) office action instead, a Decision will almost always be issued where the response does not overcome an inventive step rejection citing the same (i.e. no new) references.
What is the equivalent action in the US?
U.S. attorneys should note that the concept of Decision of Rejection is different to anything in the U.S. system. It should not be considered as the equivalent of an Advisory Action.
What are the advantages of filing a divisional application at this stage?
(For more general information on Divisional applications, see section 6.1 above or go to 5. DIVISIONAL APPLICATIONS.)
The main advantages of filing a divisional at the appeal stage are as follows.
(1) As stated in the 7.1 Overview of the Appeals system, the scope for amendments at appeal is restrictive. However, divisional claims can be more freely drafted as long as they are supported in the original disclosure and maintain unity of invention requirements.
(2) In the worst-case scenario, filing a divisional keeps the application alive. If you file a divisional application, you are guaranteed at least one office action to which you can respond. In the case of an Appeal, the application may be finally rejected without an office action being issued (and thus no chance for the applicant to respond), if the appeal examiners find there is no basis for the appeal request, i.e., they find that the ground for rejection in the Decision are not overcome.
(3) If you file a divisional at the same time as an appeal, you can request temporary suspension of the examination of a divisional application whilst the parent is pending at appeal. This allows applicants to file a precautionary divisional and decide to amend the claim scope or abandon the divisional according to the outcome of the appeal. See 5.11 Precautionary divisional applications when filing appeal for more details.