USPTO to Test New Post-Final Rejection Option

by Brian Fletcher on April 4, 2012

Pilot program will add limited time for further consideration of after-final responses in patent application prosecution

The United States Patent and Trademark Office (USPTO), as part of its on-going efforts towards compact prosecution and increased collaboration between examiners and stakeholders, announced on April 2, 2012 the start of the After Final Consideration Pilot (AFCP).

“Compact prosecution is one of our top goals,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. “The AFCP pilot will allow some additional flexibility for applicants and examiners to work together in after final situations to move applications toward allowance.”

AFCP authorizes a limited amount of non-production time for examiners to consider responses filed after a final rejection.  USPTO seeks to determine if authorizing this time will increase the number of applications that are allowed at that point in prosecution and reduce the number of Requests for Continued Examination (RCEs).

For utility, plant and reissue applications, the limited amount of time is three hours; for design applications, one hour. Examiners will be encouraged to use their professional judgment to decide whether a response can be fully considered, including any additional search required, within the time limit in order to determine whether the application is in condition for allowance.  The detailed guidelines provided to examiners can be found here:  After Final Guidelines.

Per the guidelines, examples of situations where, after a full and complete review, a response after final rejection should be entered include:

1. The amendment places the application in condition for allowance by canceling claims or complying with formal requirement(s) in response to objection(s) made in the final office action.

2. The amendment places the application in condition for allowance by rewriting objected-to claims in independent form.

3. The amendment places the application in condition for allowance by incorporating limitations from objected-to claims into independent claims, if the new claim can be determined to be allowable with only a limited amount of further consideration or search.

4. The amendment can be determined to place the application in condition for allowance with only a limited amount of further search or consideration, even if new claims are added without cancelling a corresponding number of finally rejected claims.

5. The amendment can be determined to place the application in condition for allowance by adding new limitation(s) which require only a limited amount of further consideration or search.

6. The response comprises a perfected 37 CFR 1.131 or 37 CFR 1.132 affidavit or declaration (i.e. a new declaration which corrects formal defects noted in a prior affidavit or declaration) which can be determined to place the application in condition for allowance with only a limited amount of further search or consideration.

If examiners buy into this program, it will be very welcome by applicants, especially in view of the USPTO’s proposal to nearly double the cost of RCEs.

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