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U.S.P.T.O. Modifies Program for Consideration of Responses Submitted to Final Office Actions

May.23.2013

On May 17, 2013 the U.S.P.T.O. published a notice of changes to the After Final Consideration Pilot Program (AFCP), which is now referred to as AFCP 2.0. This updated program provides applicants with an opportunity to place an application in condition for allowance by submission of claim amendments that typically would require a Request for Continued Examination (RCE) for entry and consideration by the examiner.

As illustrated in the table below, the AFCP 2.0 differs significantly from the original program in a number of ways.


AFCP 2.0

Original AFCP

Must submit separate transmittal letter requesting participation in program.

No separate request required. Decision of whether an application should be considered under the program was entirely within the examiner's discretion.

Must submit an amendment to at least one independent claim.

Claim amendments were not necessary. Program could be used to consider additional evidence, such as affidavits or declarations under 37 C.F.R. §§ 1.131 or 1.132.

Applicant must state that it is willing and available to participate in an examiner-initiated interview. If claim amendment does not place application in condition for allowance, the examiner must initiate an interview.

Decision to initiate interview under program entirely within the examiner's discretion.

 

Under the AFCP 2.0 the examiner can receive up to three additional hours to consider an amendment submitted in response to a final rejection. Upon receipt of a request complying with the requirements of AFCP 2.0, the examiner will perform an initial review of the amendment to decide whether additional search/consideration is required beyond the three hours allocated to the examiner. If so, the examiner will process the amendment as a normal after-final amendment by issuing an Advisory Action.

If the examiner decides that any additional search/consideration could be performed within the allocated three hours, the examiner will determine whether or not the claim amendment place the application in condition for allowance. If the claim amendments do not place the application in condition for allowance the examiner is required to request an interview with the applicant, which must be conducted within 10 days of the examiner's request.

Although the AFCP 2.0 presents an interesting new opportunity to place claims in condition for allowance without filing an RCE, the usefulness of this program is not yet clear because it is unknown how often examiners will decide that an amendment requires additional search/consideration beyond the three hours allocated to the examiner. In such situations the applicant would then incur extension-of-time fees that could have been avoided by filing the claim amendment along with an RCE.

The Federal Register notice for this program can be found at here. Examiner guidelines for the AFCP 2.0 can be found here.

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For more information, please contact the professional(s) listed below, or your regular Crowell & Moring contact.

Jonathan M. Lindsay
Partner – Orange County
Phone: +1 949.263.8400
Email: jlindsay@crowell.com