By Mark Levine and Ellen Schwab
The United States Patent and Trademark Office (USPTO) recently announced the expiration of the After Final Consideration Pilot Program 2.0 (AFCP 2.0), a program that was designed to enhance communications between the USPTO and patent applicants by affording applicants additional options following a final office action that effectively closes prosecution in applications. To accommodate those who are in the process of preparing to use the Program, the USPTO will still consider a request for consideration under AFCP 2.0 filed by December 14, 2024.
While the end of AFCP 2.0 closes this expedited pathway to patent allowances, there are still strategic approaches applicants can take in the post-AFCP 2.0 environment to secure favorable outcomes, which we will examine.
A Brief History
Launched in 2013, the AFCP 2.0 was designed to promote efficiency in patent prosecution by allowing examiners extra time to consider claim amendments following a final office action. Applicants could propose amendments in response to the final rejection without having to file a Request for Continued Examination (RCE), potentially saving costs, time, and resources if the amendments led to allowance of the claims. The Program incentivized faster resolution of patent prosecution by providing a window for the examiner to fully consider amendments and negotiate an allowance.
According to recent statistics, AFCP 2.0 was well-used by applicants, seeing more than 60,000 AFCP 2.0 requests filed annually, and examiners granted allowances in response to a quarter of all AFCP 2.0 requests. In addition, a survey found that most applicants felt that the AFCP 2.0 program was effective in advancing prosecution and reduced the likelihood of filing an RCE.
However, with the expiration of AFCP 2.0, patent applicants must now look to other available strategies to achieve allowance or prepare for appeal. Below are some recommended approaches for applicants navigating patent prosecution in the absence of AFCP 2.0.
Strategies for Applicants Post-AFCP 2.0
Here are some approaches a patent applicant may consider in the post-AFCP 2.0 environment:
1. Request a Pre-Amendment Examiner Interview Soon After Final Office Action
One of the most effective approaches in the post-AFCP 2.0 landscape is to initiate a pre-amendment examiner interview shortly after the issuance of a final office action. Ideally, this should occur within four to six weeks. The interview provides an opportunity to:
- Negotiate an allowance by clarifying any potential points of agreement or possible amendments that may overcome the examiner’s rejections.
- Identify amendments that could result in the withdrawal of pending rejections, even if the next step requires filing an RCE.
- Solidify a position for appeal if the examiner remains firm in their rejection, setting the stage for a well-prepared appeal brief.
Early communication with the examiner may uncover potential paths to allowance that were not initially apparent in written correspondence.
2. File an After-Final Response Within Two Months
Another recommended tactic is to file an after-final response within two months of the final office action. By doing this, applicants can take advantage of the after-advisory extension of time benefits outlined in the Manual of Patent Examining Procedure (MPEP), which allows for additional time to petition for an extension to file a supplemental amendment after an advisory action. Filing within this timeframe provides more flexibility to engage with the examiner, increasing the chances of entering amendments or positioning the case more favorably for continued prosecution.
3. Submit an After-Final Amendment
Even in the absence of AFCP 2.0, applicants can still request entry of after-final amendments as a matter of right under certain conditions. Specifically, an after-final amendment may be entered as a matter of right if it is intended to:
- take allowable subject matter from the claims that have been approved, thereby simplifying the prosecution process
- place claims in a better condition for appeal, for example, by canceling claims or removing minor objections or informalities that could distract from the core issues on appeal
Streamlining the claims in this way can enhance the applicant’s position, making the patent application more favorable to either prosecution or appeal.
4. Consider Filing a Pre-Appeal Brief Request for Review
In cases where the examiner’s rejection seems objectively obstinate, a pre-appeal brief request for review can be a viable option. While this route requires the filing of a Notice of Appeal and the associated statutory fee, it provides an avenue for applicants to challenge the examiner’s rejection before engaging in a full-blown appeal process.
The pre-appeal review can result in the reopening of prosecution or an allowance if the reviewing panel agrees with the applicant’s position. This mechanism provides a useful check against rejections that may not withstand scrutiny from higher levels within the USPTO.
5. Evaluate Whether to Continue Prosecution or Abandon the Application
In some cases (and, perhaps, as a more drastic option), applicants may need to take a step back and evaluate the value of continuing prosecution. The costs – both in terms of time and money – associated with further prosecution may not always be warranted, especially if the chances of allowance appear slim. In such cases, applicants may consider abandoning the current application and, where applicable, filing a continuing application to pursue alternative claim language or new subject matter.
Filing a continuation allows the applicant to refine their approach, potentially avoiding the pitfalls of the initial application while still protecting their inventive concept. This more drastic option can provide a fresh start for the applicant, even if it means delaying the issuance of a patent.
Bad News, Good News:
While the expiration of AFCP 2.0 removes an important tool from patent applicants’ arsenals, there are still several strategies available to navigate the post-final rejection landscape. Whether through early examiner interviews, timely responses, or carefully considered amendments, applicants can continue to negotiate successful outcomes.
In more challenging cases, a well-thought-out appeal strategy or the decision to file a continuation application can provide new opportunities for allowance. By leveraging these options effectively, patent applicants can maintain momentum in their prosecution efforts even in the absence of AFCP 2.0.