What to Expect After the USPTO Sunsets their After Final Consideration Pilot 2.0 on December 14

The United States Patent and Trademark Office’s (USPTO’s) After Final Consideration Pilot 2.0 (AFCP 2.0) has been a staple of after-final practice for patent prosecutors since its inception in 2013, offering applicants the opportunity to enter a broader range of amendments following a final rejection than permitted under traditional after-final practice. However, this program will be retiring on December 14, 2024, after which the USPTO will not be accepting requests under the program, signaling a full return to traditional after-final practice. This article will explore the effect AFCP 2.0 has had on after-final practice, the circumstances surrounding its termination, comments by the patent community at large, and practice tips for success following the program’s termination.

AFCP 2.0: A Recap

AFCP 2.0 has seen significant usage by patent practitioners seeking to enter amendments following a final rejection. USPTO statistics indicate that over 60,000 AFCP 2.0 requests have been filed each year since 2016, and according to Intellectual Property Owners Association (IPO) comments, AFCP 2.0 submissions account for ten percent of application disposals. The AFCP 2.0 program’s popularity rose at least in part due to the expansion of amendments deemed acceptable under AFCP 2.0 as compared to traditional after-final practice, and the lack of a fee for consideration under AFCP 2.0.

Under traditional after-final practice, amendments are most commonly entered only when they (a) cancel claims and/or address formalities issues, and/or (b) place rejected claims in a better form for consideration on appeal. Moreover, although examiner interviews are permitted in traditional after-final practice, such after-final interviews are granted at the discretion of the examiner.

Under AFCP 2.0 practice, applicants were permitted to present not only the limited amendments available under traditional after-final practice, but also other types of amendments. More particularly, claim amendments including a non-broadening amendment to an independent claim would be entered if those amendments were determined by the examiner to require only limited additional search and consideration. In cases in which the AFCP 2.0 request was entered, the AFCP 2.0 program guidelines indicate that an interview should be offered by the examiner. In cases where the AFCP 2.0 request was not determined by the examiner to comply with the applicable rules, the request would instead be treated under traditional after-final practice. Examiners were afforded substantial discretion in determining whether the AFCP 2.0 requests were compliant with the program requirements.

Proposed and Adopted Changes

Given its popularity and lack of additional fees, the USPTO estimated that examination of AFCP 2.0 requests incurred additional costs in excess of $15M annually. In an effort to defray these costs, the USPTO proposed instituting a fee of $500 for each AFCP 2.0 request in a Notice of Proposed Rule Making that was open to comments from the public. Although some comments were in favor of the proposed fee, a more common theme was that the program was of questionable value and a fee should only be incurred in certain circumstances, such as cases in which the amendment was actually entered and/or an interview granted. This proposal appears to have stemmed from a sentiment that good faith attempts to advance prosecution were increasingly being denied entry under the program. Some comments anecdotally suggested that there has been a rise in denials of AFCP 2.0 requests over the past few years. For example, some comments noted that examiners would indicate that further search and consideration was required (denying the AFCP 2.0 request) even when the claim amendment merely added a limitation from an examined dependent claim. Given a perceived reduction in the likelihood of entry, practitioners appeared less willing to recommend incurring a $500 fee without further modifications to the AFCP 2.0 program. For example, commenters have suggested that the $500 fee be applied as a credit to a subsequent RCE fee in the event that the AFCP 2.0 request was not entered. In response to these comments, the USPTO instead opted to terminate the AFCP 2.0 program entirely.

Practice Tips

With the sunset of AFCP 2.0 approaching, patent practitioners who once relied on AFCP 2.0 will need to modify their practices to account for the return to traditional after-final practice. In the authors’ view, this should involve further emphasis on responses after non-final office actions. Even under the AFCP 2.0 regime, it has long been good practice to ensure that the application include, no later than the response to non-final office action, claims that vary in scope from the broadest to which the applicant feels it is entitled to the narrowest that the applicant would be willing to accept. However, now that the broader bases for amendments previously available under AFCP 2.0 are no longer possible, it becomes more important to ensure that each claim group (i.e., each independent claim and the claims depending therefrom) includes subject matter that the applicant would be willing to pursue on appeal or via the pre-appeal route. Additionally, the authors recommend building a strong rapport with the examiners, as examiners often agree to interviews after final rejection even though such interviews are discretionary.

An underutilized prosecution strategy involves arguing against a rejection of an unamended independent claim (or a dependent claim rewritten in independent form) in an attempt to trigger a consecutive non-final office action. When successful, the applicant is afforded an additional opportunity to argue the patentability of the claims without incurring fees (e.g., RCE fees). If the basis of the rejection is changed in the subsequent office and nonetheless identified as “final,” the Director can be petitioned for withdrawal of finality. Practitioners utilizing this strategy should ensure that each claim group includes at least one dependent claim representing subject matter that the applicant would be willing to appeal and/or pre-appeal for compact and efficient prosecution. When this approach is unsuccessful in avoiding a final rejection, incorporation of features from a dependent claim into its base independent claim is more likely to be entered by the examiner than newly presented amendments. Therefore, thoughtful consideration should be given to strengthening dependent claims after newly discovered prior art and examiner interpretations are made of record. Practitioners should also consider including a brief explanation (e.g., on the first page of the remarks) as to how the claim amendments are believed to place the application in better condition for appeal and should, therefore, be entered.

Parting Words

Although the elimination of the AFCP 2.0 program is sure to have an effect on the patent prosecution landscape moving forward, the full extent of this effect is still unknown. Practitioners would be well-advised to develop a strong rapport with their examiners early during prosecution and maintain a collegial relationship with those examiners, while paying close attention to the strength of pending dependent claims as newly discovered prior art and examiner interpretations are revealed. Following these approaches is more likely to lead to a smooth transition to the post-AFCP 2.0 landscape.

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Author: donscarpo
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