Opportunity to Get Your Application Allowed After Final Rejection—Introducing the After Final Consideration Pilot

Authored by Mandy J. Song, Ph.D. and Anthony C. Tridico, Ph.D.

I. History of AFCP

In the United States, after a final rejection is issued on a pending patent application, prosecution of the application is considered "closed," and the applicant is generally not entitled to further consideration of any additional submission unless a Request for Continued Examination (RCE) is filed to reopen the prosecution. In rare cases, an Amendment After Final Rejection under 37 CFR 1.116(b) may be entered if the Amendment places the application in condition for allowance. However, if the Amendment raises new issues that would require further consideration and/or search, it typically will not be entered.

In March 2012, the United States Patent and Trademark Office (USPTO) launched an internal pilot program, entitled the "After Final Consideration Pilot" (AFCP) program. In a nutshell, the program allots additional time to examiners to consider applicant submissions after final rejection. Under the AFCP program, a full and complete review of a response includes any additional search required to determine whether or not proposed amendments distinguish over the prior art. Examiners should review responses under 37 CFR 1.116(b) and use their professional judgment to decide whether the nature and extent of the amendments or arguments presented in the response can be fully considered within the limited amount of time authorized by the After Final Consideration Pilot. If the examiner determines that the response can be fully considered, including any additional search required, within three hours for plant and utility applications or one hour for design applications, that amount of non-production time is available whether or not the consideration of the amendment results in allowance of the application.

Although AFCP was designed to give patent examiners an incentive to consider after-final submissions and thus foster compact prosecution, it lacks a measure to determine how well the examiners comply with the program requirements. For example, examiners are not required to provide any acknowledgment that he or she has considered the submission based on additional search or any feedback with respect to what he or she finds during the search. As a result, AFCP was implemented inconsistently among examiners, and most amendments still proceeded with applicants filing an RCE without any guidance from the examiner through the AFCP process.

RCE backlog continued to grow in 2012 through 2013. In May 2013, the USPTO initiated a RCE outreach to invite the public to submit their suggestions.¹ Based on the input received through the outreach, the USPTO launched two programs—an AFCP 2.0 program to reduce RCEs filed after final rejections, and a Quick Path Information Disclosure Statement (QPIDS) program to reduce RCEs filed after payment of the issue fee in order to submit Information Disclosure Statements (IDSs).

Compared to AFCP, AFCP 2.0 requires examiners to provide an acknowledgment whether the after-final submission was considered under the program, and if the submission does not result in allowance, AFCP 2.0 also requires an interview with the applicant to provide feedback regarding the examiner’s findings. The additional requirement for communication motivates the examiners to perform a higher quality search and more carefully consider the amendments, as he will need to explain the search and his analysis to the applicant during the interview. On the other hand, applicants benefit from the communication by having an opportunity to present stronger amendments when filing further amendments with an RCE.

Since its launch on May 19, 2013, AFCP 2.0 has received generally positive feedback from applicants and patent practitioners. It has been extended twice from its initially scheduled expiration date, and will now run through September 30, 2015.²

Recently, the USPTO added yet another new feature designed to enhance communication between the Office and applicants.³ The new feature more clearly indicates how the AFCP submission was treated by the examiner. Under this new feature, applicants will receive a specialized AFCP 2.0 form (PTO-2323) that communicates the status of the AFCP 2.0 submission and, if an interview is conducted, the form will also accompany an interview summary.

II. How AFCP 2.0 Works

A. AFCP 2.0 Requirements

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. In addition, only one request for consideration under AFCP 2.0 may be filed in response to an outstanding final rejection. Second or subsequent requests for consideration under AFCP 2.0 filed in response to the same outstanding final rejection will be processed consistent with current practice concerning responses after final rejection under 37 CFR 1.116.

In order to participate in AFCP 2.0, an applicant must include the following at filing:⁴

1. A transmittal form, such as form PTO/SB/434, that identifies the submission as an AFCP 2.0 submission and requests consideration under AFCP 2.0; 
2. a response under 37 CFR 1.116, including an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect;
3. a statement that the applicant is willing and available to participate in any interview initiated by the examiner concerning the accompanying response; and
4. any fees, such as extension fees under 37 CFR 1.136(a), that would have been necessary according to current practice concerning an after-final response under 37 CFR 1.116.

Unlike AFCP, which automatically considers an after-final submission, AFCP 2.0 requires applicants to specifically request consideration under the program. The request can be made concurrently with an after-final response under 37 CFR 1.116 or after such response is filed, but before it is considered by the examiner. Although not required, use of the PTO/SB/434 form is recommended, as it helps the Office to quickly identify the submission as an AFCP 2.0 submission and facilitates its timely processing. The form includes all the necessary statements, such as the interview statement, and the applicant can simply check the boxes.

Under AFCP 2.0, applicants must amend at least one independent claim. Therefore, applicants cannot use AFCP 2.0 to just present arguments without amending the claims, or merely amend a dependent claim. However, U.S. applications often have more than one independent claim, and applicants need only amend one to satisfy this requirement. A further requirement is that the amendment cannot broaden the scope of the independent claim in any aspect. The analysis of whether an amendment to an independent claim impermissibly broadens the scope of the claim is analogous to the guidance for determining whether a reissue claim has been broadened.⁵ Finally, all papers associated with the AFCP 2.0 program must be filed via the USPTO’s Electronic Filing System-Web (EFS-Web).

B. Processing of AFCP 2.0 Submissions

Once an AFCP 2.0 request is filed, the Examiner will review the submission to ensure all requirements are met. If the submission is incomplete, the examiner treats the submission as a regular after-final submission under 37 CFR 1.116. After verifying that the AFCP 2.0 submission is complete, the examiner will start processing procedures as illustrated by the flow chart below.⁶

The examiner will perform an initial review of the amendment to determine whether additional search and/or consideration would be required, and if so, whether such search and/or consideration would be possible within the time allotted to them under the AFCP 2.0 program. An examiner is given three hours for plant and utility applications or one hour for design applications to perform the additional search and/or consideration. If the examiner decides that the search and/or consideration cannot be completed within the allotted time, the examiner will process the submission as a regular after-final submission under 37 CFR 1.116, e.g., by mailing an advisory action.

If the examiner determines that the amendment does not necessitate additional search and/or consideration, or if the examiner determines that additional search and/or consideration is required and could be completed within the allotted time, the examiner will consider whether the amendment places the application in condition for allowance in view of the search (if one is performed). The examiner will enter the amendment and mail a notice of allowance if the examiner determines that the amendment places the application in condition for allowance. If the examiner remains unpersuaded, the examiner is required to contact the applicant to schedule an interview to discuss the amendment in view of the search.

The interview should be conducted by the examiner and someone with negotiation authority, such as a primary examiner and/or supervisory patent examiner. During the interview, the examiner may discuss with the applicant any previously cited prior art and/or any new prior art discovered through the new search. 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 to schedule the interview within ten calendar days from the date the examiner first contacts the applicant, the Examiner will proceed under current after-final practice.

III. Practice Tips

AFCP 2.0 has been widely used by practitioners as an opportunity to gain allowance after final or at least obtain further guidance on prosecuting the application. While deciding whether to request AFCP 2.0 treatment in a particular case, the following considerations are usually weighed.

1. File as early as possible. The examiner has 45 days after a properly filed request to respond. Conducting an interview may cause more delays. However, even if an after-final amendment is eligible for AFCP 2.0 consideration, such amendment does not toll the deadline for responding to the outstanding final office. Therefore, applicants may not want to file an AFCP 2.0 request if the application is already beyond the first month extension in responding to the outstanding final office action.
2. Avoid extensive claim amendments. AFCP 2.0 is most effective when the contemplated amendment will bridge relatively small gaps between the Applicant and the examiner on the issue of patentability
3. Communicate with the examiner often to gain status updates and possibly persuade the examiner to consider the submission early.
4. If an RCE is nevertheless filed, file it as soon as possible. The examiner is more likely to pick up the RCE early while his memory about the application is still fresh.

Endnotes

¹ http://www.uspto.gov/patents/init_events/rce_outreach.jsp.

² http://www.uspto.gov/patents/init_events/afcp.jsp.

³ Id.

⁴ 78 Fed. Reg. 29117, 29118

⁵ See MPEP §1412.03

⁶ See 78 Fed. Reg. at 29118-9

⁷ Although applicants represented by counsel should also consider attorney fees required for preparing the amendment and conducting the interview, if applicable.

Originally printed in CIPA Journal. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.