In a Federal Register Notice published on May 17, 2013, the USPTO announced After Final Consideration Pilot Program 2.0 (AFCP 2.0) as part of its ongoing efforts to “reduce pendency by reducing the number of Requests for Continued Examination (RCE) and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application.” The program is set to commence May 19, 2013 (yesterday!), and will run run through September 30, 2013.
The original After Final Consideration Pilot program was launched in March of 2012, and authorized “extra time” for examiners to consider responses filed after a final rejection. The goal of the program was to encourage consideration of after final responses that might otherwise have been refused entry under 37 CFR § 1.116 and MPEP § 714.12 – 714.13. The program was informal in that no special request was required to invoke the program. Rather, examiners were supposed to determine whether an after final response was appropriate for the program, and use their professional judgment to decide whether a given after final response could be considered within the additional three hours provided. While most stakeholders supported the goals of the AFCP, many found it to be unevenly implemented.
As explained on the USPTO’s AFCP 2.0 webpage, AFCP 2.0 is “[d]esigned to be more efficient and effective than the AFCP.” The new program is more formal in that five specific requirements must be satisfied to have an after final response considered under the program:
- 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 must be filed with the response.
- The response must include an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect.
- The response or transmittal must include a statement that the applicant is willing and available to participate in any interview initiated by the examiner concerning the response.
- Any necessary fees due with the response (such as extension of time fees) must be paid. (No additional fee is required for the AFCP 2.0 program itself.)
- All documents must be filed via the USPTO’s Electronic Filing System-Web (EFS-Web).
Practitioners also should know that “[o]nly one request for consideration under AFCP 2.0 may be filed in response to a given final Office Action,” and that “[r]eissue applications and reexamination proceedings are not eligible to participate.”
Processing of Responses Under AFCP 2.0
The Federal Register Notice outlines a multi-step process for consideration of a response under AFCP 2.0:
First, “the examiner will review the submission to ensure that the transmittal form, amendment, interview statement, and any necessary fees are provided.” If not, the response will be considered in accordance with usual after final practice.
If the submission complies with the formal requirements, the examiner will perform “an initial review of the amendment . … [to] determine if additional search and/or consideration would be required to determine whether the amendment would distinguish over the prior art, and if such search and/or consideration would be possible within the time allotted to them under the AFCP 2.0 program.” If the examiner determines that more than the additional allotted time would be required, the response will be considered in accordance with usual after final practice, “e.g., by mailing an advisory action.”
If the examiner determines that any required search and/or consideration could be completed within the additional allotted time, “then the examiner will consider whether the amendment places the application in condition for allowance.”
If the examiner determines that the amendment places the application in condition for allowance, then the examiner will enter the amendment and mail a notice of allowance.
If the examiner determines that the amendment does not appear to place the application in condition for allowance, then the examiner will contact the applicant to schedule an interview to discuss the amendment. …. Following the interview, the examiner will proceed with an appropriate response to the submission after final rejection according to current practice.
If the applicant declines the interview, or is unable to schedule the interview within ten (10) calendar days from the date the examiner first contacts the applicant, then the examiner may proceed with an appropriate response to the submission after final rejection according to current practice.
Thus, even if the AFCP 2.0 program does not result in allowance, applicants participating in this program may be granted an after final interview that may help advance prosecution, even if an RCE still is required.
According to the USPTO’s AFCP 2.0 Guidelines, examiners will be given up to three hours of additional non-production time for plant and utility applications and up to one hour (plus interview time) of additional time for design applications. The following schedule provides the breakdown for utility and plant applications:
If the application is being allowed:
a. If an interview was conducted, up to 2 hours of non‐production time may be charged to the AFCP 2.0 consideration code and up to 1 hour of non‐production time may be charged to the AFCP 2.0 interview code.
b. If an interview was not conducted, up to 3 hours of non‐production time may be charged to the AFCP 2.0 consideration code.
If the application is not being allowed:
a.The examiner must request an interview with the applicant. If an interview is conducted, up to 2 hours of non‐production time may be charged to the AFCP 2.0 consideration code and up to 1 hour of non‐production time may be charged to the AFCP 2.0 interview code.
b. If the applicant declines the interview or the interview cannot be conducted within ten (10) calendar days from the date the examiner requests the interview, up to 3 hours of non‐production time may be charged to the AFCP 2.0 consideration code.
Will AFCP 2.0 Reduce RCE Filings?
As explained by the USPTO, requiring applicants to make a formal request for consideration under AFCP 2.0 will help focus the program on applications most likely to benefit from the program (assuming that applicants are selective when making such requests!) and permit better tracking and data collection under the program. Further, the specific process steps outlined in the Federal Register Notice lend more transparency and clarity to the program. It will be interesting to see what percentage of cases are given additional consideration under this program, and whether different trends are seen in different technologies or art units.