Rule Review
The USPTO’s After Final Consideration Pilot Program 2.0: An Important Tool to Streamline Prosecution
One of the most significant changes to U.S. Patent and Trademark Office (USPTO) practice in the last couple of years is the USPTO’s treatment of Requests for Continued Examination (RCEs). RCEs are most often submitted in response to a Final Office Action or Notice of Allowance, either of which “closes” prosecution of the application. After a Final Office Action, the examiner typically will allow only very limited claim amendments and will not consider Information Disclosure Statements or any evidence or declarations in support of patentability. An RCE allows the applicant to reopen prosecution in exchange for a fee (currently $1200 for a large entity) so that amendments, arguments, or other documents can be submitted.
A couple of years ago, however, the USPTO eliminated the priority that it previously gave to RCEs in order to dedicate more attention to new applications awaiting examination. As a result, the wait times for processing RCEs became significantly longer, and an RCE backlog was created.1 The USPTO estimates that it currently takes about seven months for an RCE to be acted upon, but the wait can be as long as two to three years or more in certain cases.2 Other USPTO statistics, nonetheless, show that nearly 30% of RCEs result directly in allowance of the application, indicating that those RCEs may require little additional work on the examiner’s part.3
Because of the RCE backlog, avoiding RCEs where possible or attempting to speed their processing have become important prosecution strategies. To help tackle the RCE backlog, the USPTO has instituted a program called the After Final Consideration Pilot Program 2.0, or AFCP 2.0 for short. The program is currently scheduled to run until September 30, 2014, but may be extended beyond that date in the future. The USPTO’s stated goal for AFCP 2.0 is to reduce the number of RCEs filed and to encourage collaboration between applicants and examiners in order to advance prosecution of applications.4 The AFCP 2.0 program may be particularly beneficial where the applicant has claim amendments that it believes should lead to allowance of the application.
Under the AFCP 2.0 program, the examiner will be given a limited, additional amount of time to consider an applicant’s response to a Final Office Action and to conduct any further search of the art that may be required.5 That further examination time would otherwise not be available. To participate in the program, the applicant must first specifically file an AFCP 2.0 request form PTO/SB/434.6 Second, the response to the Final Rejection must include an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect (i.e., by removing or broadening a limitation). Third, the applicant must state in the response that it is willing and available to participate in any interview initiated by the examiner concerning the response. Fourth, while no additional fee is required to participate in the AFCP 2.0 program, any other necessary fees, such as extension-of-time fees, must be submitted with the response.7
The AFCP 2.0 program may also be used where the applicant has already responded to the Final Office Action but the examiner did not enter the response or claim amendments into the record. If the applicant believes that the claim amendments were straightforward and could be considered quickly, the applicant could resubmit the response with the AFCP 2.0 request form without paying any further fees beyond the extension-of-time fees.
Once the applicant submits an AFCP 2.0 request, the examiner will determine whether any further search of the art or consideration of the claim amendments can be completed within the allotted time. If not, the examiner will inform the applicant in an Advisory Action that the amendment cannot be considered. If there is sufficient time, the examiner will further examine the application to determine whether the amendment renders the application allowable. If the examiner concludes that the amended application is allowable, the examiner will issue a Notice of Allowance. If the examiner concludes that it is not allowable, the examiner will request an interview with the applicant’s representative, generally by telephone, to discuss the applicant’s response and proposed amendments.
Interviews generally can be very helpful in advancing prosecution of U.S. patent applications as they give the applicant and examiner an opportunity to discuss their points of difference and potentially reach a compromise. Hence, even if the applicant’s AFCP 2.0 request is not successful, the applicant may still get a clearer picture of why the examiner is rejecting the claims, which should help the applicant to determine how to proceed with the application in the future.
In summary, a successful AFCP 2.0 request could avoid the extra time and costs associated with filing an RCE after a Final Office Action and should speed prosecution of the application. But an unsuccessful AFCP 2.0 request may still assist the applicant in better understanding the examiner’s position on the application, which could help the applicant to advance the prosecution in the future. Thus, practitioners should consider using this program, particularly where they believe a straightforward claim amendment should lead to allowance of the application.
Finally, statistics issued by the USPTO indicate that filing a response to a Final Office Action before submitting an RCE is often beneficial in and of itself, regardless of whether the AFCP 2.0 program is used. The USPTO estimates that, during 2011, in 27% of applications in which no response to a Final Office Action was submitted before submission of an RCE, the examiner responded to the RCE by allowing the application to grant.8 There are circumstances when it is likely best to immediately file an RCE upon receipt of a Final Office Action, such as when the applicant intends to make substantial claim amendments or submit declarations or affidavits in support of patentability, or where the examiner has informed the applicant that a proposed claim amendment will not be considered without an RCE. But these statistics suggest that some RCEs could have been avoided and furthermore provide evidence of the value of the AFCP 2.0 program to applicants.
1 Between the end of 2009 and August 2012, the number of RCEs awaiting examiner action rose from about 20,000 to about 100,000. See http://www.uspto.gov/patents/init_events/rce_outreach.jsp under “statistics related to RCEs” at slide number 1.
2 See January 2014 statistics at http://www.uspto.gov/dashboards/patents/main.dashxml (last visited Mar. 5, 2014).
3 See http://www.uspto.gov/patents/init_events/rce_outreach.jsp under “statistics related to RCEs” at slide number 5.
4 78 Fed. Reg. 29117-19 (May 17, 2013).
5 Up to three hours for utility and plant applications, and up to one hour (plus any time attributed to an interview with the applicant) for design applications. See Guidelines for Consideration of Responses After Final Rejection under 37 CFR 1.116(b) under the After Final Consideration Pilot 2.0 (AFCP 2.0), available at http://www.uspto.gov/patents/init_events/afcp_guidelines.pdf (last visited Mar. 6, 2014).
6 A fillable PDF form may be downloaded at http://www.uspto.gov/forms/sb0434.pdf.
7 78 Fed. Reg. at 29118.
8 See http://www.uspto.gov/patents/init_events/rce_outreach.jsp under “statistics related to RCEs” at slide number 6.
