In response to a Final Office Action, a patent applicant has several options at their disposal. The applicant can request an interview with the examiner, use the two-month rule to file a response, file a response with a request for continued examination (RCE), file a notice of appeal, or a combination of these. With the goal of providing options that improve compact prosecution, the United States Patent and Trademark Office (USPTO) has also introduced the After Final Consideration Pilot (AFCP).
As of the writing of this article, the current version of the AFCP is AFCP 2.0. Under AFCP 2.0, examiners are authorized to spend additional time searching and considering amendments after a Final Office Action. If the application is not in condition for allowance, the examiner will schedule an interview with the applicant to discuss the results. The USPTO touts that this will provide “additional search and consideration” which may be valuable even if the amendments do not render the claims allowable. Although this additional value sounds helpful, in practice examiners may provide some updated search results while saying that the amendments require further consideration in order to give more conclusive feedback. As a result, the additional information provided by the AFCP program may be minimal in some cases. In these cases, additional client funds may need to be used on extensions or on time preparing and filing multiple responses after the Final Office Action. This can be particularly important for clients with tighter IP budgets.
There are circumstances where the AFCP program is more likely to yield meaningful results and, therefore, will provide value to your client that is worth the effort. As a starting point, the minimum requirements for filing an AFCP request include filing a response after final, filing the AFCP request form via the Electronic Filing System, making at least one amendment in the response that does not broaden the claim scope, and being willing to participate in a follow up interview. Once the minimum requirements are met, it is worth considering whether AFCP will be likely to provide meaningful results. In our experience, responses with amendments that do not significantly change the scope of the claims are much more likely to be resolved via AFCP.
How do you identify whether an amendment “significantly” changes the scope of a claim? Although this varies from case to case, changes that are less likely to significantly change claim scope include changes for clarification that are not intended to change the substance of claim features (or not by much), minor changes that narrow claim features to prevent the claims from reading on specific elements in the art, and other changes which will not likely require a lot of additional searching. One way to find out whether a change is likely to be less effective under AFCP is to simply ask the examiner. When considering an AFCP request, the examiner will use their professional judgment to determine whether the amendment can reasonably be resolved in the time allotted (about 3 hours for utility patent applications). As a result, the best person to tell you whether AFCP will yield meaningful results is the examiner.
Another factor to consider is time. When you file the AFCP request, the examiner will consider the amendments and provide a response usually within 45 days. If you do not receive a response before the 3 month deadline, you will need to file an extension of time in order to respond. Thus, if you do not receive an allowance, you will need to pay the extension fee and take any other action (for example, filing a response with RCE or filing a notice of appeal) to keep the application pending. Because of this, it is preferable to file an AFCP request early to reduce the chance that an extension of time will be needed.
A possible approach to effectively utilizing the AFCP program is as follows. When you receive a final office action for an application that you believe is approaching allowability, request an interview with the examiner to propose any minor amendments needed to resolve the current rejections. If the examiner indicates that your amendments will require further search but are likely allowable, confirm if the AFCP program would help them. If so, file the AFCP request as soon as possible, preferably before the 3 month deadline. Note that interviews after final are discretionary, but examiners are much more likely to accept such interviews if the applicant is proposing amendments that they believe will advance the case to allowance. If the examiner declines the interview but you believe your amendments are minor, it may still be worth filing the AFCP request.
