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:
- 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.
- The amendment places the application in condition for allowance by rewriting objected-to claims in independent form.
- 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.
- 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.
- 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.
- 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 firstname.lastname@example.org.