IP Newsletter (November 2015)

The USPTO recently announced that the After Final Consideration Pilot Program
2.0 (AFCP 2.0) has been extended, for an additional year, through September 30, 2016.
Prior to the AFCP 2.0, an applicant did not have any right to unrestricted further
prosecution after a final rejection. Accordingly, an applicant planning to further
prosecute an application after a final rejection was required to file a Request for
Continued Examination (RCE) and pay a required fee of up to $1,700. However, AFCP
2.0 provides the applicant with another chance to respond after a final rejection to
potentially attain allowance without having to file an RCE. In effect, AFCP 2.0
authorizes additional time for examiners to search and/or consider responses after the
final rejection, as well as schedule and conduct an interview with the applicant to discuss
the results of their search and consideration. Under this program, the applicant benefits
from the additional search and consideration afforded by the pilot, even when the results
do not lead to allowance.1
To be eligible for consideration under AFCP 2.0, the following requirements must
be met:
1.

2.

3.

The application must be a utility, plant, or design application filed

under 35 U.S.C. 111(a) or an international application that has
entered the national stage in compliance with 35 U.S.C. 111(a).2
A response to the final rejection must be filed, under 37 CFR
1.116, which includes:
a. A request for consideration under the pilot (Form
PTO/SB/434).
b. An amendment to at least one independent claim that does not
broaden the scope of the independent claim in any aspect.
Please note that, if the application includes more than one
independent claim, only one must be amended to meet this
requirement.3
The applicant must be willing and available to participate in an
interview requested by the examiner concerning the response.4

Similar to the AFCP, even if the requirements above are met, the examiner may
deny an AFCP 2.0 request under his or her professional judgment5 if he or she decides
the response cannot be fully considered under the program.
In making this
determination, the examiner may consider whether an additional search is needed and, if
so, whether it can be completed within the allotted period of time.
1

http://www.uspto.gov/patent/initiatives/after-final-consideration-pilot-20
http://www.uspto.gov/sites/default/files/forms/sb0434.pdf
3
http://www.uspto.gov/patent/initiatives/after-final-consideration-pilot-20
4
http://www.uspto.gov/sites/default/files/forms/sb0434.pdf
5
http://www.uspto.gov/patent/initiatives/after-final-consideration-pilot-20
2

Please also note that, since the program requires an amendment to at least one
independent claim that does not broaden its scope, AFCP 2.0 would most likely not be
beneficial when the applicant believes the claims are allowable in their current form.

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