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After Final Consideration Pilot Offers USPTO Applicants Compact Prosecution, Reduced Costs

By Brent E. Matthias - March 25, 2015

The USPTO recently announced an extension of its after final consideration pilot, called AFCP 2.0.

This pilot program offers Applicants an additional avenue for gaining allowance of an application that is under final rejection. The potential for securing allowance without filing a Request for Continued Examination (RCE) offers Applicants the possibility of reduced prosecution costs and pendency, and therefore the use of the AFCP 2.0 should be strongly considered for applications under final rejection.

As the name of the pilot program suggests, AFCP 2.0 is the second after final consideration pilot to be offered by the USPTO. The first program, known as After Final Consideration Pilot (AFCP) and promulgated in 2012, made some headway in allowing some finally rejected applications that would have otherwise been further prosecuted by Appeal or RCE, thereby avoiding adding to the backlog of applications pending at the USPTO. To follow on this initial success, the USPTO launched AFCP 2.0 on May 19, 2013, with the program initially scheduled to close on September 30, 2013. Recently, AFCP 2.0 was extended until December 14, 2014, granting current applicants additional opportunity to take advantage of this program.

Both the USPTO and patent Applicants have much to gain from AFCP 2.0. For the USPTO, the program may help reduce a rapidly expanding RCE backlog. Previously, USPTO policy dictated that applications in which an RCE was filed were handled in expedited fashion with preference over unexamined applications. Applicants could expect a further action by the Examiner within a few months of filing the RCE. The USPTO changed its policy toward RCEs a few years ago, however, by creating a special RCE docket into which RCE applications are now entered. Examiners are now advised to examine approximately one application from the RCE docket per month, with preference given to unexamined applications. As a result of this policy, the new RCE dockets have grown exponentially. AFCP 2.0 promises to increase the number of cases allowed without an RCE, which will avoid adding to the USPTO backlog. As for applicants, the AFCP 2.0 will give them the opportunity to reduce prosecution costs by avoiding the RCE fee, which currently stands $1,200 for a large entity filing a first RCE. Additionally, Applicants can avoid the delay associated with an RCE, which in some art units is measured in years, not months.

AFCP 2.0 lays out specific requirements to participate in the program. To be eligible, the application must be a utility, design, or plant nonprovisional application that has received a final rejection. Eligible applications include national stage applications and continuing applications (e.g., divisional or continuation applications), but not reissue and reexamination applications.

Additionally, AFCP 2.0 lays out four (4) specific filing requirements to participate in the program. The filing requirements request after final consideration under the current program are:

1) The Applicant must specifically request participation in the program, preferably by filing transmittal form PTO/SB/434;

2) The Applicant must submit a response to the final Office action that complies with 37 CFR 1.116 and includes a non- broadening amendment to at least one independent claim;

3) The Applicant must state that it is willing and available to participate in any interview initiated by the Examiner; and

4) The Applicant must submit any fees due, such as extension and/or extra claims fees.

Once a complete request is filed, the Examiner will review the submission to ensure all requirements are met. Because the above-noted PTO/SB/434 transmittal form includes all of the necessary statements by the Applicant, use of this form is highly recommended.

After verifying that the AFCP 2.0 submission is complete, the Examiner will perform an initial review of the application. The primary consideration during initial review is whether additional search and/or consideration is needed to determine whether the amended claims would distinguish the prior art, and if that additional search/consideration can be completed within the amount of time afforded Examiner’s under the program. Under AFCP 2.0, Examiners are given two to three hours for additional search and consideration. If further time is needed to search and/or consider the amendment, the Examiner will process the Amendment under standard after-final rules, typically by issuing an Advisory Action.

If, however, the Examiner determines that the necessary search and/or consideration of the amendment will not exceed the amount of time allotted under AFCP 2.0, the Examiner will then conduct a full review to determine if the application is in condition for allowance. During this full review, the Examiner may conclude that the amendment places the application in condition for allowance and will issue a Notice of Allowance. Otherwise, if the Examiner remains unpersuaded, the Examiner is to contact the Applicant to schedule an interview to discuss the amendment. After the interview, the Examiner again has the option of either allowing the application or issuing an Advisory Action. If the Applicant declines the interview or is unavailable, the Examiner will proceed under current after- final practice.

Based on the foregoing, we recommend requesting consideration under AFCP 2.0 when the contemplated amendment will bridge relatively small gaps between the Applicant and the Examiner on the issue of patentability. At most, the Examiner will have three hours to review and consider the Amendment, so extensive amendments and/or argumentation will likely lead the Examiner to conclude that additional time is needed, thereby rejecting consideration under the pilot program. Targeted amendments that allow for a concise explanation as to how the amended claims distinguish over the prior art, however, should benefit from the program by securing early allowance and avoiding RCE fees. For these cases, the minimal cost and burden to request consideration under AFCP 2.0 is well worth the opportunity to avoid the RCE process.

The professionals at Miller, Matthias & Hull LLP continuously strive to protect our clients’ intellectual property to the fullest extent possible while being cost-effective and budget conscious. For more information on how we can help with your IP needs, please contact us at (312)977-9902.