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After Final Consideration Pilot 2.0 Extended
October 15, 2015

The USPTO recently announced that the After Final Consideration Pilot 2.0 (AFCP 2.0) has been extended for another year and will now run through September 30, 2016. The first iteration of the program launched in 2012, and the current revamped version has been in effect since May 19, 2013.

Prior to the program, applicants usually could not continue to prosecute an application after a final rejection without filing a Request for Continued Examination (RCE) and paying a required fee of up to $1,700. The AFCP 2.0 “is designed to enhance communication between the Office and applicant,” and may give an applicant another chance to respond after a final rejection, and potentially achieve allowance, without filing an RCE.

The program has been favorably received by both applicants and patent examiners. Under the program, the examiner is allotted additional time to search and consider responses after a final rejection. When the response to the final rejection does not result in an allowance, the applicant is entitled to an interview with the examiner to discuss both the results of the search and the consideration of the response. The program is beneficial to applicants as it provides an additional opportunity to enter an amendment in response to a final rejection, and there no required USPTO fee accompanying an AFCP 2.0 request.

When allowance is not achieved, applicants still may find the additional communication with the examiner to be beneficial. The information gained during the interview with the examiner may provide information to present stronger arguments and amendments when later reopening prosecution with an RCE. The interview could further provide helpful insight into whether an RCE has a reasonable likelihood of success, or whether it may be better to abandon the case or appeal the examiner’s determination. The additional examiner’s search may also uncover art that, without participation in the program, would not be presented until the application is further along in prosecution.

When an application contains an outstanding final rejection, the following requirements must be met to participate in the program:

  1. The application must be a utility, plant, or design nonprovisional application filed under 35 U.S.C. 111(a) or an international application that has entered the national stage in compliance with 35 U.S.C. 111(a).
  2. At least one independent claim must be amended in response to the final rejection. The amendment cannot broaden the scope of the independent claim in any aspect.
  3. The applicant, or the applicant’s representative, must be willing and available to participate in an interview requested by the examiner concerning the response.
  4. The applicant must file the required PT/SB/434 AFCP 2.0 request form using the USPTO’s electronic filing system.

Even if the above-requirements are met, the examiner may deny an AFCP 2.0 request under his or her “professional judgment” if he or she decides the response cannot be fully considered under the program. In making this determination, the examiner may take into account whether an additional search is required, and if so, whether it can be completed within the allotted period of time. Examiners are generally given up to an additional 3 hours for plant and utility applications and up to 1 hour for design applications under the program.

One potential disadvantage is that an AFCP 2.0 request does not affect fee calculations. The examiner may take up to 45 days to respond to the request, and taking part in an interview may cause an additional delay. If participation does not lead to an allowance, the resulting delays may require the applicant to pay fees for extending the shortened statutory period for responding to the final rejection. An applicant should consider these costs if the application is near or beyond the shortened 3-month period for responding.

Because the AFCP 2.0 requires an amendment to at least one independent claim that does not broaden its scope, the program may not be appropriate when the applicant believes the claims are allowable in their current form, or wishes to reply to the final rejection without placing additional claim amendments into the prosecution history. Further, examiners are likely to deny AFCP 2.0 requests with extensive claim amendments, as these amendments are particularly likely to require an additional examiner’s search to properly examine. The program is therefore particularly suited to situations where a relatively minor amendment can be applied to at least one independent claim. Note that, when an application includes more than one independent claim, only one must be amended to meet the requirements of the program.

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While the AFCP 2.0 program has drawbacks, it presents a cost-effective opportunity to respond to a final rejection and gain valuable information from the examiner in the right circumstances. If you have any questions regarding these issues, please confer with your Brinks team.

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