Once a final rejection has been entered in an application, there is no right to unrestricted further prosecution. However, to advance the goal of compact prosecution, the USPTO introduced a program in 2012 that outlined when entry of an Amendment After Final Rejection under 37 CFR 1.116(b) may lead to earlier allowance of the application and enhanced collaboration between the examiner and stakeholders. This USPTO program is currently the After Final Consideration Pilot Program 2.0 (AFCP 2.0).
To be eligible for consideration under AFCP 2.0, an applicant must file a response under 37 CFR §1.116, which includes a request for consideration under the pilot (Form PTO/SB/434) and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. As was the case with the AFCP, examiners will continue to use their professional judgment to decide whether the response can be fully considered under AFCP 2.0. This will include determining whether any additional search is required and can be completed within the allotted time in order to determine whether the application can be allowed. Interestingly, examiners are given extra time to consider the application under AFCP 2.0 – three hours for utility and plant applications and one hour for design applications, including a patent search. 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.
Judging by the consistency of the allowance rate and the number of AFCP 2.0 requests, it appears that the program is functioning as the USPTO intended, namely to streamline and shorten the patent prosecution process. According to Juristat statistics:
In 2017, examiners issued allowances in response to 25.4% of AFCP 2.0 requests, relieving those applicants of the time and expense involved with RCEs and appeals. And in 2019, the AFCP 2.0’s popularity skyrocketed from just over 10,000 applications in 2013 to almost 70,000 in 2017 – all while maintaining a consistent number of allowances.[i]
Overall, there is not much discrepancy among AFCP 2.0 use in technology centers.[ii] The only tech center with a noticeable lack thereof is TC 1600, which handles applications in the life sciences technology sector, including microbiology, immunology, cosmetics, and drugs. The most popular tech centers for AFCP requests have been TC 2100 and TC 2400. TC 2100 provides examination for patent applications including Computer Architecture Software and Information Security. TC 2400 provides examination for patent application including Computer Networks, Multiplex, Cable and Cryptography/Security.
This article appeared in the November 2020 issue of Global Patent Prosecution. To view our past issues, as well as other firm newsletters, please click here.