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Did the USPTO Really Improve the 'After Final Consideration Pilot'?

On October 1, 2014, the United States Patent and Trademark Office (“USPTO”) announced the After Final Consideration Pilot 2.0 (“AFCP 2.0”) – a program intended to provide new features that will enhance communication between the USPTO and the applicant, as compared with the original After Final Consideration Pilot (“AFCP”).  AFCP 2.0 is free and will remain in effect until September 30, 2015.

There are two significant differences between the original AFCP program and AFCP 2.0:

1.      Requirement for Amendment to At Least One Independent Claim

A response after final rejection under AFCP 2.0 must include an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect.  The purpose of this requirement, which was not required in the original AFCP program, is to focus the program on applications that are more likely to benefit from the program.

2.      Availability for an Interview

If the examiner’s review of the response does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response.  Form PTO/SB/434 includes a statement that the applicant is willing to participate in an interview initiated by the examiner.

While the requirement for an amendment to at least one independent claim may very well increase the effectiveness of the program due to a focus on applications that are more likely to benefit from the program, this change does not appear to provide any additional advantages to applicants.  Under current practice, examiners have sufficient basis not to consider many responses filed after a final rejection, often because the examiner determines that further search and/or consideration is required.  While AFCP 2.0 allots a limited amount of time for examiners to consider after-final amendments and to conduct a further search, examiners still have discretion to determine that the amount of time allotted under AFCP 2.0 is insufficient.  In particular, prior to considering the amendments and conducting any additional searches, the examiner must first determine whether additional searching and/or consideration is required and whether such search and/or consideration can be completed within the time allotted under AFCP 2.0.  Only after this determination will the examiner consider the amendment, conduct additional searching, and, if required, request an interview.

Accordingly, while the USPTO statistics may show an increased percentage of applications allowed after final through the program, this increased percentage could simply be a result of reduced participation in the program. Applicants can continue to expect examiners to issue an advisory action indicating that further search and/or consideration is required.

 

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Lisa Adams

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Lisa Adams is an intellectual property attorney at Mintz who advises clients on a wide range of IP matters, including patent portfolio development, clearance to market analyses, acquisitions, diligence, and post-grant proceedings at the US Patent and Trademark Office.