By: W. Thomas Babbitt, Esq.
The United States Patent and Trademark Office (“USPTO”) announced recently that its After Final Consideration Pilot 2.0 (“AFCP 2.0”) has been extended through September 30, 2019. Under the current patent examination process, a patent application is reviewed by a patent examiner for patent eligibility. If the patent examiner does not think the patent application meets the requirements for a patent grant, the examiner will issue a non-final office action explaining the reason(s) for rejecting the patent application. The patent applicant is provided an opportunity to make amendments and/or argue against the patent examiner’s reasoning in the non-final office action. If the patent examiner is not convinced by the amendments and/or arguments, the patent examiner will issue a final office action. Should the patent applicant desire to present additional amendments or arguments, often times such additional amendments or arguments would have to be presented in a Request for Continued Examination (“RCE”) with a corresponding fee, if a patent examiner determined that the additional amendments and/or arguments could not be fully considered within the allotted time provided to the patent examiner for consideration of after-final responses.
The AFCP 2.0 and its predecessor, the After Final Consideration Program (“AFCP”), began in 2012 as a way to enhance communication between patent examiners and patent applicants by authorizing additional time for patent examiners to search and/or consider responses after a final office action in lieu of the required RCE. Under the AFCP 2.0, patent examiners also use the additional time to schedule and conduct interviews to discuss the results of their search and/or consideration with patent applicants, if a response does not place the application in condition for allowance.
To be eligible for consideration under the AFCP 2.0, a patent applicant must file a response to the final office action that includes a request for consideration under the pilot and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. There are no fees unique to filing a request under the AFCP 2.0.
In response to a request filed under the AFCP 2.0, a patent examiner will be allotted a set amount of time to consider the response and to conduct a search, if necessary. Patent examiners will continue to use their professional judgment to decide whether the response can be fully considered under the AFCP 2.0. In this regard, and because an AFCP 2.0 request does not affect the fee calculations for extending the three month period for responding to a final office action, patent applicants should seek to file any response with a request under the AFCP 2.0 quickly (e.g., within two months of the mailing date of the final office action). Patent applicants or their representatives should also make themselves available for an interview after filing the request for the AFCP 2.0 to benefit from the additional search and consideration afforded by the pilot, even when the result does not lead to allowance of an application.
The USPTO encourages patent applicants considering filing a response to a final rejection that they believe will lead to allowance with only limited further searching and/or consideration by patent examiners, to take advantage of a request under the AFCP 2.0
If you have any questions regarding patent applications or the AFCP 2.0, please contact W. Thomas Babbitt. Tom is a Partner at Leech Tishman and practices in the firm’s Intellectual Property Practice Group. Tom is based in the El Segundo, CA office and can be reached at 424.738.4400 or firstname.lastname@example.org.
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