We all dread the words “Final Office Action” from the USPTO. But in the context of U.S. patent practice, a final action actually opens up a number of possibilities for response. By understanding the Examiner’s motivation behind issuing a final action and the options available to both the examiner and the applicant, we can use after-final practice to our advantage. We will discuss how to navigate the USPTO’s has expanded alternatives for after-final practice in addition to the critical questions of whether a final rejection is proper and how best to avoid a final action.
Anthony Tridico, Ph.D., managing partner of Finnegan's London office, has worked in Europe for most of his career, gaining significant knowledge of the European Patent Convention (EPC) and the diversity of laws and practice among the European national systems. His knowledge of the various legal systems and how they differ from the U.S. allows Anthony to effectively counsel clients across life sciences industries with global interests in intellectual property. Anthony has over 20 years of experience representing clients with a focus on patent office trials and appeals (PTAB and EPO), patent prosecution management, IP due diligence and litigation. His practice includes experience in a variety of technical areas including biologics, immunology and biotechnology, chemical and pharmaceutical sciences, polymers and adhesives, food sciences, medical devices, and diagnostics and instrumentation.