The US patent office has extended its After Final Pilot (AFP) program for another year. This program is designed to facilitate communication between patent applicants and Patent Office Examiners. Among the veritable alphabet soup of programs the Patent Office has implemented over the past few years in an attempt to overcome a backlog of patent applications, this program serves a useful purpose even if not quite yet living up to its promise.
The Patent Office typically reviews a patent application within a year or two after filing. For some technologies it is much longer than this - this work is supposed to be done within about 14 months. The Office then issues a Office Action which typically rejects the patent application for various reasons. The patent applicant responds to this Office Action with arguments and potential claim amendments in an attempt to get The Patent Office examiner to approve the application.
A First Office Action - basically an official letter - is often the first substantive communication received from the Patent Office - and it is typically non-final.
The non-finality of the Action means that the applicant is free to make amendments and/or arguments in an attempt to change the Patent Office examiner's mind about the allowablility (i.e., approvability) of the claims of the application. The Applicant's arguments and amendments are made via a Response (i.e., letter) which the Office is obligated to review and respond to. After the applicant has responded to the non-Final Office Action, typically within a few months, a Final Office Action is received from the patent Office. At this point, the patent applicant's options in the recent past have been very limited in that he could make arguments to the Office, but the Examiner typically was not obligated to consider these arguments nor any amendments that might be made-due to the finality of the Action.
An appeal to the Appeals Board is an option at the time of a Final Office Action, but this is expensive and perhaps overkill in the case where more negotiation with the Examiner could be productive. Another option has been to file a Request for Continued Examination (RCE) with an appropriate fee which simply continues the prosecution of the application for a fee. In this case the examiner is given more time to review a Response filed by the applicant according to the Patent Office's internal guidelines. The problem with this strategy is that it is expensive and slow. In the past an RCE typically resulted in a delay of 6 months, but in the last few years this stretched to over two years in some cases. More recently the Patent Office has again changed its procedures such that this delay may again be lessened, but we will have to wait and see... Sometimes multiple RCE's are filed in the same application due to complex issues being presented, crowded prior art and other reasons including the particular Examiner or Applicant participating. The costs jump $600 from a first RCE to subsequent filings such that it is much better to resolve issues before a second and subsequent RCE are necessary.
The AFP is an attempt to resolve issues so an RCE or appeal are not necessary by giving the Examiner time (although not as much time as if an RCE is filed) under the Office rules to review an application if an amendment is made to the claims of the application, among other requirements. The applicant merely needs to file a Response to the Final Office and file a (free) request for consideration in the AFP and it is considered by the Examiner. So far so good...
The program does allow the Examiner a bit more time and it has made (in the author's limited experience) Patent Office examiners more willing to talk to applicants about the substance of an application at the time of a Final Office Action. Prior to AFP, examiners typically would not discuss an application until after the filing of an RCE at this stage. However, the time period allowed with an AFP Request is often not sufficient for all that the examiner needs to do so an RCE is still typically necessary. On the bright side, a conversation with the examiner and/or the filing of a Response with a Request for the AFP serves often to minimize issues and further the patent process along. So although approval of an application at the AFP stage may still be rare, the program has the effect of providing an additional unofficial Office Action through a telephone conversation with the examiner and/or an Advisory Action-a letter - issued by the Office in reply to a Response filed with an AFP Request.
As indicated, an RCE is still usually necessary. So tactically, the best plan for an applicant is to do something within two months of a Final Office action even though the normal due date is three months (to avoid extensions of time and corresponding fees). By filing within two months, the Office stops the clock and restarts the time for any extension fees at the time of its response (i.e., Advisory Action) instead of running any time period for extensions from the original Final Office Action mailing date. The best plan for this something at this point usually means to file a Response with an AFP Request. This can be preceded or followed up by a telephone call to the examiner. Even though the result of such call and Response are not likely approval, the clock has now stopped until the Advisory Action is mailed. The applicant having received feedback from the phone call and Advisory Action courtesy of the AFP may now file a second Response to the Final Office Action (since the first one often is not even entered by the Examiner) informed by this feedback with an RCE (and likely a one month extension fee) in the hope that any issues have been resolved in his (or his attorney's) interaction with the Examiner.
So the After Final Pilot Program has been renewed and this can be good thing - if it is used tactically-even if not for the reasons that the patent office may think.