USPTO Modifies After Final Amendment Pilot Program

Last week the United States Patent and Trademark Office (USPTO) announced in the Federal Register that it would modify the After Final Consideration Pilot Program (AFCP) to create an After Final Consideration Pilot Program 2.0 (AFCP 2.0). The goal of AFCP 2.0 is much the same as it was when the USPTO initially introduced the precursor AFCP. According to the USPTO, the goal of AFCP 2.0 is to reduce pendency by reducing the number of RCEs and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application. Thus, this can and should be viewed as part of the USPTO effort to continue to try and address the RCE problem.

AFCP 2.0 began on May 19, 2013 and will run through September 30, 2013. The USPTO says that any request for participation in the program must be filed on or before September 30, 2013. Of course, as is always the case, the USPTO left open the possibility that the pilot would be extended beyond that date.

You may recall that the AFCP was initially created by the USPTO at the beginning of 2012. See New PTO Initiative Gives More Opportunity to Amend After Final. The purpose of the program was to attempt to move cases along without the need to file an Request for Continued Examination (RCE) when the case was very near to completion. Under AFCP the applicant could engage with the examiner beyond what is otherwise allowed under the rules if the examiner determined that the response filed could be fully considered within 3 hours for plant or utility application, or within 1 hour for design patent applications. See USPTO Memo to Examiners.

There are thus three main differences between AFCP and AFCP 2.0. These are:

An applicant must request to participate in AFCP 2.0.
A response after final rejection under AFCP 2.0 must include an amendment to at least one independent claim.
The examiner will request an interview with the applicant to discuss a response, if the response did not result in a determination that all pending claims are in condition for allowance.

Applicants who wish to participate in AFCP 2.0 must file a request to have a response after final rejection, which the examiner may have sufficient basis not to consider under current practice, considered by the examiner without reopening prosecution. The response after final rejection must include an amendment to at least one independent claim. The examiner will be allotted a set amount of time under AFCP 2.0 to consider the response. If the examiner’s consideration of a proper AFCP 2.0 request and response does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response.

There is no additional fee required to request consideration of an amendment after final rejection under AFCP 2.0, but any necessary existing fee, e.g., the fee for an extension of time, must still be paid.

For more see Scott McKeown article at Patents Post Grant.

Gene Quinn Gene Quinn is a patent attorney and a leading commentator on patent law and innovation policy. Mr. Quinn has twice been named one of the top 50 most influential people [...see more]

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Join the Discussion

2 comments so far.

Benjie
May 22, 2013 09:22 am
I think it’s a great step by the Patent Office. I recently had an after final telephone interview with an Examiner and his SPE in which they worked under the directives of this program on their own accord without my filing the official request. This program is perfect for cases that are close to a resolution and need some fine tuning, or where an obvious amendment would work to move the case to allowance. Both the Examiner and the SPE were very helpful in suggesting amendments, and I was astounded that they would offer to accept amendments after final, even though they could have required an RCE. We all know how they like to get their extra counts, and this Examiner was passing one up in an effort to move the application through to allowance. THIS is how the Patent Office should work. The patent examination system is not intended to be an adversarial system. The applicant and the Examiner should actually be working on the same side to determine what the best claims should be for the disclosed subject matter. I applaud this program and the efforts of this particular Examiner and SPE to move cases through their Art Unit. We normally get two bites at the apple before we have to pay, basically, another filing fee. This gives us at least 2 and a half bites, and I’ll take every bite I can get to save my clients time and money.

In another recent case I had received a really poor NF rejection. I argued against the rejection without amending, and the Examiner upheld his previous rejection. So now I’m at Final faced with appealing the rejection and wasting an inordinate amount of my client’s time and money on an appeal. I would have probably had the rejections removed through a pre-appeal brief conference, but that still would have required the client to pay the Notice of Appeal fee which he really couldn’t afford – especially for such a worthless rejection. (What do you say to clients when they ask why they have to pour money down the drain for such a crappy rejection?) I called the Examiner half expecting him to refuse the interview since I had previously spoken to him on an issue with the drawings. However, when I called him at our scheduled time, he started off by saying that his rejection was really bad. I asked him if I could just file a request for reconsideration, and he agreed. We have since received another NF Office Action with much better art.

These recent experiences lead me to believe that the Patent Office has directed their Examiners to act like people instead of rejection robots and to work with Applicants in bringing the cases to swift and appropriate conclusions with either allowances or abandonments by the Applicant when there just isn’t any patentable subject matter disclosed. Again, I applaud the PTO on their recent efforts to clean up prosecution. It has certainly made my casework flow.
Mark Summerfield
May 21, 2013 07:00 pm
Thanks for reporting this, Gene.

I can see how this revised practice might improve consistency, but it is harder to see how it will reduce RCEs (or, alternatively, continuations).

It seems to me that if you are required to amend at least one independent claim, there are only two possibilities. First you might incorporate the subject matter of some allowed dependent claim, in which case you have clearly placed the application in order for allowance, and no special ‘after final’ practice is required.

Alternatively, you might incorporate some new limitation to distinguish over the cited art, in which case the Examiner will want to conduct further searching. The difference from the previous practice is that if the Examiner is not going to allow the application, s/he is obliged to request an interview. This may make some examiners think twice about whether their time might be better spent actually performing a search, rather than rejecting the after-final amendment on the basis that further searching is required.

But in many cases, it seems to me that the outcome will be the same. And the practice does not address the common situation in which there is disagreement about the interpretation of the claim language and/or the cited art, in which the Applicant does not believe that any narrowing amendment should be required. You might amend to take advantage of the after-final process, but you will either fail and end up filing an RCE anyway, or you will succeed, and probably file a continuation to pursue the broader subject matter to which you believe you are entitled.

Now that it is necessary to file an explicit request to participate, I would be interested in US practitioners’ views on the circumstances in which they would recommend this course to a client.

Mark