TAKEAWAY: New considerations for claim amendment strategy during the course of prosecution will likely arise for patent practitioners following the USPTO’s termination of the After Final Consideration Pilot (AFCP) 2.0 Program.
The USPTO implemented the After Final Consideration Pilot (AFCP) 2.0 Program in 2013 in an effort to streamline examination after a final rejection when issues could be resolved without re-opening prosecution. AFCP 2.0 allowed patent practitioners to seek entry of proposed claim amendments following a final rejection in a patent application, with certain helpful advantages. For example, AFCP 2.0 provided examiners with additional time to consider whether the proposed amendments were acceptable for entry after a final rejection, as compared with traditional after-final practice. Additionally, the lack of a fee for the consideration of amendments under AFCP 2.0 also made the program attractive to after-final amendment strategies.
Comparatively, in traditional after-final practice, claim amendments made after a final rejection may be entered by a patent examiner if they (1) take allowable subject matter, (2) cancel claims and/or address issues with formalities, or (3) place the finally rejected claims in better form for appeal.
Therefore, with AFCP 2.0 no longer being an option for after-final practice, practitioners may wish to place a greater emphasis on actions taken during earlier stages of examination. For example, in traditional after-final practice, an interview with the examiner is not automatically granted after a final rejection has been issued. While an interview can still be held, practitioners may have greater success in securing an after-final interview if they make sure to discuss an application with an examiner earlier on, after a non-final rejection. Examiners who are already familiar with the applicant may be more willing to grant an interview. In addition, amending claims with an appeal strategy in mind at the non-final rejection stage may also be important. For example, an applicant may wish to amend the claims in response to a non-final rejection in a manner that may be helpful in an appeal.
With the end of AFCP 2.0, patent practitioners may see the need to rely on the tried and true strategies of before, such as appeal and re-opening prosecution by filing a Request for Continued Examination (RCE).