Imagine That IP Law Blog

UPDATE:  On September 30, 2024 The United States Patent and Trademark Office  announced that the After Final Consideration Pilot Program 2.0 (AFCP 2.0) will be allowed to expire. See The Expiration of the After Final Consideration Pilot Program 2.0 (AFCP 2.0)

Final rejections are inevitable in patent prosecution, often requiring patent practitioners and applicants to carefully consider their next steps. While a Request for Continued Examination (RCE) is a common option, it is not always the most cost-effective, especially when a response can be submitted within the shortened two-month statutory window. Fortunately, there are alternative routes to address final rejections before resorting to an RCE, including filing a response under the After Final Consideration Pilot Program 2.0 (AFCP 2.0) or under 37 CFR § 1.116 (1.116 Response). Both options provide distinct advantages and limitations, and choosing the right one depends on the specifics of each case.

The AFCP 2.0 Program: A Path for Minor Amendments

The AFCP 2.0 program was launched by the United States Patent and Trademark Office (USPTO) in 2013 to help applicants and examiners resolve final rejections without needing an RCE. This program allows examiners to consider minor amendments to claims in situations where additional examination time is not required. Under AFCP 2.0, examiners receive a few additional hours (typically 2-4 hours, depending on the art unit) to review the applicant’s response, consider arguments, and hold an interview.

One of the key advantages of AFCP 2.0 is its promotion of direct engagement between the applicant and the examiner. The program’s guidelines state that if an amendment does not place the claims in condition for allowance, the examiner will request an interview with the applicant to discuss the response (see Federal Register  Vol 78 No 96 May 17, 2013). In practice, however, the decision to hold an interview is often at the discretion of the examiner.

To qualify for AFCP 2.0, the applicant must amend at least one independent claim without broadening its scope. Importantly, the program is not available for reissue applications or reexamination proceedings. While there is currently no separate fee for submitting an AFCP 2.0 request, applicants should be mindful of any applicable fees for add-on items, such as extensions of time or excess claims.

37 CFR § 1.116: A Broader, More Flexible Approach

Responses under 37 CFR § 1.116 offer another option for applicants facing final rejections. This regulation allows applicants to submit amendments or additional evidence after a final rejection, as long as the submission is made before filing an appeal or an RCE. A 1.116 Response can include amendments that (1) cancel claims, (2) present rejected claims in a better form for appeal, or (3) address the merits of the rejection with good and sufficient reasons for why the amendment was not presented earlier.

Unlike AFCP 2.0, 1.116 Responses do not automatically provide for additional review time for examiners. Examiners have the discretion to enter or refuse these amendments, meaning that there is no guarantee the examiner will review the response. If the examiner does review it, they may either allow the claims or issue an advisory action, which informs the applicant that the response has been reviewed but does not place the application in condition for allowance.

One of the key differences between 37 CFR § 1.116 and AFCP 2.0 is the flexibility it provides. 1.116 Responses allow for broader amendments, including the submission of new evidence, which can be crucial in certain cases. Further, a 1.116 Response requires no new amendments or arguments. However, this flexibility comes with the risk that the examiner may reject the changes entirely or simply fail to respond, leaving the applicant with no option but to file an RCE or appeal.

Timing and Cost Considerations

Timing plays a crucial role in determining the best approach for addressing a final rejection. When filing a 1.116 Response, it is essential to consider the two-month shortened statutory period for responding to the final rejection. If a response is filed within this window, and the examiner issues an advisory action after the three-month deadline, the applicant may be able to avoid extension fees. The USPTO offers examples of how this can work in practice, highlighting that the mailing date of an advisory action may extend the statutory response deadline (see MPEP §714.13).

On the other hand, AFCP 2.0 does not toll the statutory period for responding to a final office action. This means that while the program offers an opportunity for examiner engagement and potential resolution without an RCE, applicants must still adhere to the strict statutory timelines, potentially facing extension fees if they run out of time. In addition, there is a proposal for charging $500 for Large Entities, $200 for Small Entities and $100 for Micro Entities for filing a response under AFCP 2.0 starting in fiscal year 2025 (see Federal Register Vol 89 No. 65 April 3, 2024).

Choosing the Right Strategy

So, which strategy is right for your case? The answer depends on the specifics of the situation. AFCP 2.0 is ideal for applicants who believe that minor amendments can resolve the rejection without requiring further substantive examination. Its key advantages include cost-effectiveness and the opportunity for direct communication with the examiner, which can be beneficial for clarifying amendments or addressing examiner concerns.

However, not all cases will fit within the narrow scope of AFCP 2.0. In cases where broader amendments are needed, or new evidence must be introduced, a 1.116 Response may be the better option. Further, a 1.116 Response without new amendments or arguments allows applicants an additional opportunity to have previously presented arguments reconsidered. This approach offers more flexibility but comes with the risk that the examiner may reject the changes, potentially requiring the applicant to file an RCE or appeal to keep the application alive.

Both AFCP 2.0 and 37 CFR § 1.116 provide valuable tools for addressing final rejections in patent prosecution. Understanding the advantages and limitations of each approach and the timing and cost implications is critical to choosing the best path forward for each case. By carefully considering these factors, applicants can optimize their chances of securing patent protection without unnecessary delays or expenses.