How the USPTO Could Make a Permanent After-Final Consideration Program Work

As John Squires heads out of committee and toward full Senate confirmation to become the next Director of the U.S. Patent and Trademark Office (USPTO), there are a few things he could do at the outset to make an immediate impact.

Top of the list would be re-instituting an after-final consideration program similar to the After-Final Consideration Pilot Program 2.0 that was eliminated by former Director Kathi Vidal. This would lower the cost of getting a patent when allowance is close.

How to Avoid the Fate of AFCP 2.0

Many practitioners used the AFCP 2.0 program, and with great success. But toward the end of the program’s life, examiners were increasingly unwilling to participate, with many disingenuously alleging that too much search and consideration was needed even for straightforward amendments related to subject matter that had already been considered on the record. This was apparently because there just wasn’t enough incentive for examiners to participate.

So the first thing for the new Director to do when reinstituting an after-final program would be to identify what happened to the last program.  Specifically, what changed over time to have examiners by and large willing to engage with applicants in the early days of the program, but then by the end simply push everyone into a Request for Continued Examination (RCE)? Were the incentives different at the program’s inception and changed toward the end? Based on the outcome of that analysis, additional counts or examining hours might be allocated for the next program beyond what was previously afforded under the AFCP 2.0 program.

Then there’s the costs of running the program itself. Taking the Office at its word, the AFCP 2.0 program was operating at a loss. A small fee might help a new iteration of the program remain revenue positive without being so much that applicants would never use the program. Perhaps the Office could consider charging a fee that rolls over into an RCE or Notice of Appeal if the examiner refuses participate in the program, or charging a refundable fee if the examiner is unwilling to consider the offered amendments.

Of course, any fee would diminish one of the biggest advantages of using the ACFP 2.0 program – no government fees. It would also curtail the use of this program as a means to push through the Office’s record backlog quickly. But perhaps a new fee could be charged in the range of $400-$700, which would probably be acceptable to many applicants, particularly if that fee rolls forward in the event the filing does not result in an allowance.

Charging a fee for an AFCP 3.0 would allow applicants to still get to allowance relatively inexpensively – at least at a lower cost than filing an RCE or Notice of Appeal – while also not completely wasting that money should an agreement not be reached. For many cases, it would also result in wrapping up prosecution earlier and without the need for any RCE or Notice of Appeal, which would be good not just for applicants themselves but also for the Office, which is still trying to find ways to address its historically large unexamined application backlog and longer than desirable average pendency.

As an added bonus to patent applicants, it would also be beneficial to make the next after-final program permanent, rather than a mere pilot program like its predecessors. With the cost-shifting mentioned above, perhaps the Office could be persuaded to do so.

It’s Time for a New and Improved AFCP

In the end, the AFCP 2.0 program was extremely popular. In fact, at a recent IPWatchdog conference, the audience was asked which patent prosecutors had used the program in the past. Nearly the entire room raised their hands. It was clear that this was a popular and widely-used program. If administered correctly, another after-final program could provide tremendous benefit again, particularly to small and medium-sized entities that do not have the deep pockets of Big Tech yet still need patent protection.

Mr. Squires, it’s time for After-Final 3.0 to make its way onto the scene.

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Author: roobcio
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