July 2012 Issue

Rule Review—Rule 1.116(b) and the USPTO’s After Final Consideration Pilot

Rule 1.116(b) provides a mechanism for patent applicants to amend claims after a final rejection and prior to appeal.  Specifically, it allows for (1) amendments canceling claims or complying with a requirement of form set forth in a previous Office action; (2) amendments presenting rejected claims in better form for appeal; or (3) amendments touching the merits, when presented with reasons why the amendment is necessary and was not earlier presented.

On March 25, 2012, the United States Patent and Trademark Office (USPTO) launched a pilot program to further its goal of compact prosecution and cut down on the number of unnecessary Requests for Continued Examination (RCEs).  The After Final Consideration Pilot (AFCP), ending September 30, 2012, affords examiners extra time to consider responses after final rejections.  The program allows applicants and examiners to work together in after-final situations to move applications towards allowance by authorizing three hours of nonproduction time for examiners to consider after-final responses for utility applications. 

During the pilot program, after an applicant files a response to a final Office action under Rule 1.116, the examiner determines whether he should take advantage of the extra time allowed by the program.  The examiner should determine how long it will take to fully consider the response, including conducting the additional searches required to determine whether the amendments distinguish over the prior art.  If the examiner does not think the response can be fully considered even in the extra time provided under the AFCP program, he should treat the response according to current, non-AFCP practice.

The preliminary results of the AFCP show an increase in allowance rates for applications after final rejection.  Although the AFCP does not provide for an applicant to request participation in the program, an applicant may want to suggest participation informally through a phone call to the examiner, especially if the applicant believes that the amendments are of a nature to be examined in the AFCP-prescribed time periods.  Regardless, it may be useful for an applicant to file a response under 37 C.F.R. § 1.116 after a final rejection during the pilot program, if the applicant believes such a response may lead to allowance of the application with only limited further search and consideration by the examiner.