USPTO EXTENDS AFTER FINAL PILOT PROGRAM

The United States Patent & Trademark Office recently extended the current After Final Pilot Program until September 30, 2015, at which time the program will be up for renewal again. The After Final Consideration Pilot (AFCP) Program 2.0 which originally began on May 19, 2013 aims to reduce the number of Request for Continued Examinations (RCE) filed and increase the collaboration between the applicant and the examiner.

The AFCP 2.0 allows claim amendments to be considered after a final rejection and can be used at any time after a final rejection has been issued. Furthermore, the AFCP 2.0 can be used after the receipt of an advisory action, whether or not the first after-final response was entered. However, only on request for AFCP may be filed per final rejection; thus, careful consideration must be given whether to file a first attempt to respond to final rejection to see if the Examiner will enter the amendment and reserve the AFCP to address remaining issues. Second or subsequent requests for consideration under AFCP 2.0 filed in response to the same final rejection will be processed consistent with current practices concerning responses after final rejections.

To be eligible to participate in AFCP 2.0, an application must contain an outstanding final rejection and be an original utility, plant or design non-provisional application filed under 35 USC 111(a) or an international application that has entered national stage in compliance with 35 USC 371(c). Reissue and reexamination proceedings are not eligible. A request for an examiner to consider an amendment after final rejection under AFCP 2.0 must include the following:

1. A transmittal 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;
4. Any necessary fees, although there is no additional charge for entry into the program; and
5. All papers filed by the USPTO electron filing system (EFS-Web).

Under AFCP 2.0, the applicant must specifically request consideration to participate in the program via the transmittal form. This is to ensure that efforts are focused on applications that are more likely to benefit from the program. The amendment to the independent claim that accompanies the transmittal form must not broaden the scope of the claim in any aspect. If there exists a need to broaden the claims in any respect, then the applicant cannot use this program and an RCE must be filed. Furthermore, the necessary fees include any fees that are consistent with current practices concerning actions after final rejections. Thus an AFCP 2.0 submission filed three months after the mailing of a final rejection must include the appropriate fee for an extension of time.

Upon receipt of the AFCP 2.0 submission, the examiner reviews the submission to ensure that all the necessary elements are present. If any information is missing, the examiner will process the submission consistent with current practices. After verifying the required information, the examiner will perform an initial review of the amendment and determine whether an addition search and/or consideration is required to determine whether the amendment would distinguish over prior art and if the search is possible in the allotted time of three hours for a plant/utility patent and one hour for a design patent. If a search is required but could not be completed in the allotted time, the examiner will process the submission consistent with current practices. If the examiner determines that the amendment does not necessitate additional searches or a search could be completed in the allotted time then the examiner will consider whether the amendment places the application in condition for allowance. If so, then the examiner will enter the amendment and mail a notice of allowance. If the amendment does not place the application in a condition for allowance, the Examiner will then contact the applicant to schedule an interview.

In summary, the After Final Pilot Program is a great opportunity for an applicant who has received a Final Office Action to present additional claim amendments to the Examiner, and possibly speak with the Examiner to move the application to allowance.