Patent Office Extends AFCP 2.0 and QPIDS Pilot Programs to September 2015

13 October 2014 Dashboard Insights Blog

The United States Patent and Trademark Office (USPTO) just announced it has extended the After Final Consideration Pilot program (AFCP 2.0) and the Quick Path Information Disclosure Statement program (QPIDS), which are now set to run until September 30, 2015.

For automotive, manufacturing, and other companies, the AFCP 2.0 and QPIDS programs can help reduce patent-related expenses and shorten the patent process by addressing different late-stage patent prosecution issues.

The AFCP 2.0 program has been offered in various iterations since 2012 as a way for patent applicants to present claim amendments that address rejections in Final Office Actions. Under prior practice, after-final claim amendments typically would not be considered by an examiner without filing a Request for Continued Examination (RCE), which could be expensive (up to $1,700 under the current USPTO fee schedule) and could delay examination. Under AFCP 2.0, examiners are afforded additional, previously unavailable time to search and consider after-final claim amendments. Though situation and examiner dependent, the program has proven to be a useful tool for advancing applications and reaching allowance without the added cost or delay otherwise associated with filing an RCE.

As part of its announcement, the USPTO also indicated that AFCP 2.0 will include a new “feature” in the shape of a USPTO form to help examiners more clearly indicate how each AFCP 2.0 request has been treated. The USPTO expects examiners to begin using form PTO-2323 in November 2014.

As before, participation in AFCP 2.0 requires (1) a non-broadening amendment to at least one independent claim, (2) completing form PTO/SB/434, and (3) the applicant or legal representative being available for an interview with the examiner. No fees are required. For more information regarding AFCP 2.0, please see our post from October of last year and the USPTO’s AFCP page.

The QPIDS program has been offered since 2012 as a way for applicants to submit Information Disclosure Statements (IDS) after allowance, but prior to issuance, of a patent application. The program may be especially helpful for automotive companies with global patent portfolios when prior art references are cited in a foreign application. Under prior practice to have a post-allowance IDS considered, an applicant needed to file an RCE, which as described above, could be expensive and could delay review or allowance of an application. Under QPIDS, a post-allowance IDS may be submitted with a “conditional” RCE and related fee – provided the IDS does not require reopening prosecution, the RCE fee will be refunded. It should be noted, however, that all other IDS requirements, including reference timing, must still be satisfied. For more information, please see the USPTO’s QPIDS page.

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services