A Primer on AFCP 2.0

Effective Date and Duration of AFCP 2.0: May 19, 2013 until September 30, 2013, a request to consider an amendment after final rejection under AFCP 2.0 must be filed on or before September 30, 2013. The USPTO may extend AFCP 2.0 (with or without modifications) depending on feedback from the participants and the effectiveness of the pilot program.

The United States Patent and Trademark Office (USPTO) has modified the After Final Consideration Pilot Program (AFCP) to create the After Final Consideration Pilot Program 2.0 (AFCP 2.0). Applicants who wish to participate in AFCP 2.0 must file a request to have a response after final rejection (which the examiner may have sufficient basis not to consider under current practice) considered by the examiner without reopening prosecution. The response after final rejection must include an amendment to at least one independent claim. The examiner will be allotted a set amount of time under AFCP 2.0 to consider the response. If the examiner’s consideration of a proper AFCP 2.0 request and 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.

• An applicant must request to participate in AFCP 2.0. Applicants are advised to use form PTO/SB/434, which is available at http://www.uspto.gov/forms/index.jsp, to request consideration under AFCP 2.0. Use of this form will also help the Office to quickly identify AFCP 2.0 submissions and facilitate timely processing of such submissions
• A response after final rejection under AFCP 2.0 must include an amendment to at least one independent claim
• The examiner will request an interview with the applicant to discuss a response, if the response did not result in a determination that all pending claims are in condition for allowance
• There is no additional fee required to request consideration of an amendment after final rejection under AFCP 2.0, but any necessary existing fee, e.g., the fee for an extension of time, must still be paid

Eligibility:

In order to be eligible to participate in AFCP 2.0, an application must contain an outstanding final rejection and be (i) an original utility, plant, or design nonprovisional application filed under 35 U.S.C. 111(a), or (ii) an international application that has entered the national stage in compliance with 35 U.S.C. 371(c). A continuing application (e.g., a continuation or divisional application) is filed under 35 U.S.C. 111(a) and is thus eligible to participate in AFCP 2.0. Reissue applications and reexamination proceedings are not eligible to participate in AFCP 2.0.

Under current practice, examiners have sufficient basis not to consider many responses filed after a final rejection, including responses that would require further search and/or consideration. See, e.g., sections 714.12 through 714.13 of the Manual of Patent Examining Procedure (8th ed. 2001) (Rev. 9, August 2012) (MPEP).

AFCP 2.0 involves responses filed after a final rejection pursuant to 37 CFR 1.116. AFCP 2.0 replaces previous AFCP that terminated on May 18, 2013.

AFCP 2.0 allots a limited amount of time for examiners to consider responses after final rejection that include an amendment to at least one independent claim and require further search and/or consideration. Examiners will also use the time allotted to them under AFCP 2.0 to conduct an interview to discuss the response, for those responses that do not place the application in condition for allowance.

Only one request for consideration under AFCP 2.0 may be filed in response to an outstanding final rejection. Second or subsequent requests for consideration under AFCP 2.0 filed in response to the same outstanding final rejection will be processed consistent with current practice concerning responses after final rejection under 37 CFR 1.116. In addition, all papers associated with this pilot program must be filed via the USPTO’s Electronic Filing System-Web (EFS–Web).

A submission under AFCP 2.0 must include a response filed under 37 CFR 1.116. The 37 CFR 1.116 response must include an amendment to at least one independent claim. The amendment may not broaden the scope of the independent claim in any aspect. For the purposes of AFCP 2.0, the analysis of whether an amendment to an independent claim impermissibly broadens the scope of the claim will be analogous to the guidance set forth in section 1412.03 of the MPEP for determining whether a reissue claim has been broadened.

A submission under AFCP 2.0 must include a statement by the applicant that they are willing and available to participate in any interview initiated by the examiner concerning the response filed with the AFCP submission. Form PTO/SB/434 includes the required interview statement.

A submission under AFCP 2.0 must also include any fees that would be necessary, consistent with current practice concerning an after final response under 37 CFR 1.116. For example, an AFCP 2.0 submission that is filed more than three months after the mailing of a final rejection must include the appropriate fee for an extension of time under 37 CFR 1.136(a).

If additional search and/or consideration would be required but could not be completed within the allotted time, the examiner will process the submission consistent with current practice concerning responses after final rejection under 37 CFR 1.116, e.g., by mailing an advisory action. If the examiner determines that the amendment does not necessitate additional search and/or consideration, or if the examiner determines that additional search and/or consideration is required and could be completed within the allotted time, then the examiner will consider whether the amendment places the application in condition for allowance (after completing the additional search and/or consideration, if required). 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.

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.

If additional search and/or consideration would be required but could not be completed within the allotted time, the examiner will process the submission consistent with current practice concerning responses after final rejection under 37 CFR 1.116, e.g., by mailing an advisory action.

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