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New PTO Initiative Gives More Opportunities to Amend After Final


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: April 2, 2012 @ 10:37 pm
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Earlier today the United States Patent and Trademark Office (USPTO) announced the start of the After Final Consideration Pilot (AFCP).  The USPTO touts this After Final pilot as part of its on-going efforts to further both compact prosecution and increased collaboration between examiners and stakeholders.  This initiative, however, seems to squarely be targeting the growing problem of lengthy waits for RCEs (now up to 2 years or longer in some areas) when little additional work is realistically necessary to put the case in condition for allowance.

Over the past several months, including at the PLI Patent Law Institute and at the MIP Patent Forum in Washington, DC, last week, former Commissioner for Patents Bob Stoll took the blame for the growing RCE backlog.  Those familiar with patent practice know that RCEs were previously placed at the front of the line in the patent examiner’s active work pile.  Stoll changed this, placing RCEs on the new work docket, which effectively lengthened RCE consideration from several months to several years.  This was done to expedite patent examiners picking up new cases, which worked, but came at the expense of what is now over an 85,000 case RCE backlog.  In retrospect Stoll says moving RCEs was probably a mistake.  It has taken the USPTO well over a year to do anything about this because of the need to negotiate with the union over additional examiner time and credit for dealing with After Final submissions in the pilot program.

“Compact prosecution is one of our top goals,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. “The AFCP pilot will allow some additional flexibility for applicants and examiners to work together in after final situations to move applications toward allowance.”

When will applicants be able to avail themselves of the After Final Consideration Pilot?  An Amendment After Final Rejection under 37 CFR 1.116(b) will be appropriate when the Amendment may lead to earlier allowance of the application without undue burden on the examiner or applicant.

Situations where after a full and complete review, a response after final rejection should be entered:

  1. The amendment places the application in condition for allowance by canceling claims or complying with formal requirement(s) in response to objection(s) made in the final office action.
  2. The amendment places the application in condition for allowance by rewriting objected-to claims in independent form.
  3. The amendment places the application in condition for allowance by incorporating limitations from objected-to claims into independent claims, if the new claim can be determined to be allowable with only a limited amount of further consideration or search.
  4. The amendment can be determined to place the application in condition for allowance with only a limited amount of further search or consideration, even if new claims are added without cancelling a corresponding number of finally rejected claims.
  5. The amendment can be determined to place the application in condition for allowance by adding new limitation(s) which require only a limited amount of further consideration or search.
  6. The response comprises a perfected 37 CFR 1.131 or 37 CFR 1.132 affidavit or declaration (i.e. a new declaration which corrects formal defects noted in a prior affidavit or declaration) which can be determined to place the application in condition for allowance with only a limited amount of further search or consideration.

The Patent Office is directing Patent Examiners to review responses filed under 37 CFR 1.116(b) and use their professional judgment to decide whether the nature and extent of the amendments or arguments presented in the response can be fully considered within the limited amount of time authorized by the After Final Consideration Pilot. If not, examiners should treat the response according to current practice, without non-production time authorized. However, if the examiner determines that the response can be fully considered, including any additional search required, within 3 hours for plant and utility applications or 1 hour for design applications, that amount of non-production time is available to the Patent Examiners whether or not the consideration of the amendment results in allowance of the application.

There is certainly the potential for abuse by some Patent Examiners, so to prevent Patent Examiners from taking this allowed non-production time for any After Final Amendment the Office will prohibit the use of non-production time for those situations where Amendments After Final would normally be entered according to current practice.  Furthermore, as part of a housekeeping effort aimed at allowing the Office better track which time an Examiner is relying upon, if an interview is conducted After Final the non-production time authorized by this pilot must be recorded under two separate time codes. For utility and plant applications, 2 hours should be charged to a pilot consideration code, and 1 hour should be charged to an interview code. For design applications, 1 hour should be charged to the pilot consideration code and the time attributed to the interview should be charged to the interview code.

Of course, the Patent Office can’t help but shake their finger at both practitioners/applicants and Patent Examiners.  The Office is of the opinion that many of the difficulties encountered in the prosecution of a patent application after Final Rejection could be alleviated if the application includes claims varying from the broadest to which the applicant believes he or she is entitled, to the most detailed that he or she is willing to accept.  See MPEP 714.12. The Office further points out that the sooner in the application there is a broad claim scope present the better.

Patent Examiners are also reminded by the Office that they should conduct an initial search which is as complete as possible, in keeping with the scope of the claims as well as disclosed features and subject matter which the examiner reasonably anticipates might be incorporated into the claims.  From a practitioners standpoint there is nothing quite as frustrating as adding matter into claims that is clearly supported in the application only to be told that this is not allowable because it would require additional searching.  Hopefully that practice will be minimized moving forward.

All and all this seems like a positive development.  If you do provide a claim set that defines the invention from broad to narrow it seems extremely likely that at least some claims could be obtained in a case given that  amendments can now be filed if they place the application in condition for allowance by adding one or more new limitations that require only a limited amount of further consideration or search.  Assuming that the Patent Examiners do search the disclosure, like they are supposed to, and not just the initial claim set, allowable matter should be present and allowed to be added to the case.  This should be quite beneficial to independent inventors, small businesses and start-ups who absolutely, positively need to get patents as quick as possible to continue to raise funds from investors.

Of course, as with any changes to the patent examination process we will need to keep our eye on the metrics to see what impact is felt.  For at least some cases it would seem this After Final Consideration Pilot will alleviate the need to file an RCE.  The continued decline of RCE filings, which have now flat-lined or decreased for the past three years, is a huge success story.  Now if we can significantly reduce the need to file an RCE all the better.  The last piece of the puzzle then becomes a mechanism to more quickly deal with those RCEs that are filed so that applicants don’t get nearly to the finish line only to have to stand in line for another 2 years of waiting before additional consideration.

For additional information and petition submission guidelines, contact Katherine Matecki, by telephone at 571-272-5250 or kathy.matecki@uspto.gov.

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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Prosecution, Patents, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

12 comments
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  1. “Final” – “You keep using that word. I do not think it means what you think it means”

    ….they are gonna need a new name.

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  3. Looks like a good program.

  4. Gene,

    I’ve already been contacted by an Examiner handling two related cases of mine under this program. I appreciated the Examiner calling me as we were able to resolve moving these cases to allowance with a few additional claim amendments and the filing of a terminal disclaimer in one of the cases. I do hope this program continues.

  5. If I do not enter amendments (I’ve been told by multiple attorney’s that I’m very lenient in this regard) because they require further search and consideration, it is usually because they absolutely do. However, I in my Advisory Actions I try to inform the Applicant whether they will overcome my rejections or not.

    I’m in an area where broad claims are the rule and the art is varied. In my experience RCEs happen for four main reasons. I arranged them from most common to least common. 1) The claim set was entirely too broad requring substantial claim amendments not incorporated from the depedent claims on the first round or if it was incorporated from the depedent claims, the depedent feature was made much clearer through the amendment or they included more than two depedent claims. However, I then reject second attempt because I have an actual invention to search for and they again have to amend after final. 2) I had solid art on the claims (not necessarily on the invention but can be both) and they don’t want to deal with it and amend/argue properly and only decided to amend after final. Oops too late. 3) Inventor forces them to keep arguing and would be better suited for appeal. 4) Silly PTO practices.

    Applicant’s would be better prepared to avoid these things if:
    1) They did a prior art search (if it doesn’t have an IDS or an inadequate one, it raises the likelyhood of RCE and/or abandonment in my book). They had a claim to every aspect of their inventive concept so that it could be properly searched the first time. Amended a claim such that it didn’t, or explained why their amendments dont, just overcome a 102 but also prevents 103 (this is almost never done). Unless they have a rock solid argument against my argument or don’t understand it, calling me for an interview (which tends to happen after-final more, and that is frustrating because there is little I can do to help them amend the claims then without having to search more). For foreign applications, assuming that near directly translated claims will do the same thing here that it did abroad or assuming they are legible and easily understood.

    2) Don’t think about what you’re inventing. Think about what you are claiming. Also an interview before final is vastly more useful than one after final.

    3) I feel bad for you. When you aren’t amending anything and just arguing with me. Appeal would be a better route because it’s not like I’m just blindly holding my opinion.

    4) Well thank goodness it isn’t my fault.

    On my end, I do my best to search applications and try invention search as much as possible (not just claim searching, which I find to be hurriedly finding the best piece of art to match the claims and hand-waving any problematic dependent claims), however I am only human. Sometimes I do not completely understand all important aspects of the invention. Sometimes the claims are all over the place and I can’t make 10 separate 102 rejections for each embodiment.

  6. JExaminer-

    Thanks for taking the time to provide this comment.

    Let me ask you this… what if the art you find is good and the amendment then goes back into the specification to pull out additional nuances not present in the art cited? How do you handle that? I think this is handled in a variety of different ways, and I was glad to see the Office suggest that Examiners should do additional searching if it wouldn’t be onerous.

    -Gene

  7. Gene,

    One thing I do not see on the list that I heard Kappos discuss at the Sughrue Symposium is the ability to submit IDS’s late in the process without invoking an RCE penalty. Is this captured in the materials you reviewed?

  8. Anon-

    I have heard Kappos discuss the late IDS issue as well. I do not see this directly addressed in this pilot program. I do, however, have some reason to believe there may be more coming relating to RCEs. The Office wants to keep the numbers declining, as well as dig into the growing backlog of RCEs.

    -Gene

  9. Gene

    It depends on how much searching would need to be done. For instance, I had a case where I did my best to search the art for the invention and I found a solid piece of art. This seemed to hit every aspect of the invention and solidly hit every part claimed. The first response was to argue that my invention didn’t hit their concept because they made their invention using a different material. I didn’t see it as different and argued my art. However, it was only after final they pulled a specific embodiment (preferred embodiment) that my prior art did not meet. This additional limitation would have definitely required additional searching. I decided it would be best for an RCE.

    Only after I completed the RCE, did I realize that although my art did not meet the new limitation, I found a new reference that was better. I did this in under 3 hours. However, what could I have done to prevent the RCE? A new limitation that was entered that required further search and consideration that was done in no part due a mistake on my behalf. In contrast, I recently allowed a couple of RCEs without any rejections but in both cases amendments were substantial and both took longer than 3 hours to research. How could I have judged this upfront?

    An examiner is only afforded 11 days to respond to an after final. Now I’ve received an amendment that clearly indicates additional searching will be needed. It could be easy and be less than 3 hours but it may not and then I have not only wasted my time but now I have less days to submit a response. Then on top of that, if I decide to allow, that often requires messaging primaries, STIC searching, and among other things on top of claim searching and interpretation that can often take more than 11 days.

    For after finals the perfect amendment includes clearly allowable subject matter that was directly or indirectly (through rejections) indicated Examiner. However that is rare and my search time is limited. Maybe I missed an aspect of the invention and it has taken until after final to amend to this point. So now my options are the following: searching for allowance and of going over 11 days, allowing and possibly cutting short my allowance protocol, reopening after final, or RCE. The first option hits my workflow negatively and may not even result in allowance. The second option is neither fair to myself or Applicant since the search would be hindered. The third option is definitely not fair to me because reopening is a bad mark on my record, for something that wasn’t added due to any fault of my own. The fourth has always remained the most fair option. Applicants pay for additional examination time and the examiner gets a chance to search a broader/narrower/better target.

    So let’s review the history. First, the PTO created a solution to take some burden off the examiners that added examination time where there might not be any and burden off of Applicant’s that may have had an invention but were cut short in pursuing it. RCEs allowed Applicant’s additional examination, examiners additional time and counts, and the USPTO more money to pay for additional examination. However, that created a new problem where an overwhelming amount of RCEs were clogging the taking up/processing of new cases. The PTO’s new solution was to delay the examination of RCEs so long that no one will file them. However, RCEs were created to solve a problem and did an okay job of combating that problem. Unless someone can come up with a better way of extending examination that is fair to both parties, RCEs are here to stay (because like the war drugs, we can’t force people to just say no [on either side]).

    Now, we are entering a place where RCEs are not necessarily fair to Applicants. Waiting many months to over a year for a response is not fair to the Applicant or sometimes even the examiner (because it can be such a long time from initial examination, which can sometimes be a blessing because you enter the search with a new clarity). I agree with Gene and others that something needs to be done from the inside.

    In response, the office has created the additional necessary guidelines above. Another helpful guideline would be rerouting after issuance IDS processing so that it does not require an RCE. Another one might be requiring any case that has gone more than a certain number of rounds without substantial amendments to file an appeal. Repetitive rejections aren’t fun for either side and are a waste of time/money.

    However, I can think of two further possible solutions: 1) A special RCE docket, requiring a certain number/percentage of RCEs done per quarter/month based on your number of RCEs and that you pick up your oldest 1-3 cases or 2) A special RCE docket, similar to the amended docket, requiring a deadline of no more than 4-6 months for response based on when a RCE was filed. The benefits to doing a case early would be similar to the current amended docket.

    Using one or a combination of both of these solutions, RCEs could be done without too much clogging of new cases, the oldest RCEs would be examined first preventing cherry picking, and RCEs would still be undesirable (preventing the overfiling problem the new system was intending to prevent) but reasonable (sometimes they are necessary, i.e. case starts with broad subject matter, broad claims, etc) and an attorney could be given an approximate window of when a case might come back. Furthermore, the separate docket would not allow the RCEs to share space with continuations and divisions which get priority and even further delay examination on RCEs.

  10. JExaminer-

    Thanks for the comment.

    Would you have interest in taking this comment together with your other comment and formatting it into an article for publication on IPWatchdog.com? I think you have some great stuff here. I can publish it anonymously if you are interested.

    -Gene

  11. [...] To read the article in its entirety, please visit IPWatchdog.com. [...]

  12. Maybe, I’m not sure. I would consider it as I have seen articles by examiners on here before. I just care a lot about the Office and would like for it to live up to its potential.