Navigating Patent Prosecution after a Final Rejection – U.S. Patent Office Extends After Final Pilot Program through 9/30/2024

During prosecution of a U.S. patent application, a second office action issued by the U.S. Patent Office (USPTO) is usually made final by the patent examiner.  Once an office action is made final, applicants have the option to reopen prosecution by filing a Request for Continued Examination (RCE) or filing an appeal.  Both of these options, however, require the payment of additional fees to the USPTO and can result in delays in the review of the patent application.  For example, the U.S. Patent Office fee for filing an RCE for a “large” entity (a company with over 500 employees) is $1,360.  The large entity fee for filing a second or subsequent RCE is $2,000

As such, it may be beneficial in certain cases to take advantage of alternative methods of continuing prosecution of an application following a final rejection that do not require the payment of large USPTO fees.

In 2013, the USPTO enacted the After Final Consideration Pilot Program (AFCP).  The goal of the AFCP was to provide an alternative way to respond to final office actions to push applications toward allowance without requiring the time and cost associated with RCEs and appeals.  One of the main advantages of the AFCP is that it provides patent examiners with additional time to perform supplemental searches and conduct interviews with applicants.

The AFCP is particularly useful in applications that are close to allowance.  (In cases with extensive amendments that the examiner is unable to address in the additional time allotted by the program, an Examiner would typically inform the patent applicant that they aren’t able to resolve the application under the AFCP.  At that point, the applicant may need to file an RCE or appeal in order to continue prosecution.  Even if the AFCP does not result in an allowance, the applicant may still benefit from the additional discussions with the patent examiner.

Response to the AFCP has been positive.  Over 25% of applicants that participate in the AFCP receive a Notice of Allowance (NOA) as the next action from the USPTO.

Navigating Patent Prosecution - Brient IP Law

In order to take advantage of the AFCP, an applicant must file a response under 37 CFR §1.116 that includes a request for consideration under the pilot, and an amendment to at least one of the application’s broadest claims that does not broaden the scope of the claim.  There is no USPTO fee for submitting a request for consideration under the AFCP.

The USPTO recently announced that the AFCP was being extended through September 30, 2024.  As such, applicants will have at least another year to take advantage of the program.

Please contact us if you have any questions regarding the After Final Pilot Program or need any other assistance with obtaining patent protection in an efficient and cost-effective manner.

Navigating USPTO Wait Times: The Strategic Advantage of Early Trademark Filing

Facing extended wait times at the USPTO? Discover why filing your trademark application early is more crucial than ever. Learn about the strategic advantages and legal benefits of early filing in our latest article.

Understanding Trademark Infringement

Discover the intricate factors that define trademark infringement, from mark similarity to consumer sophistication. Learn how these elements influence the outcome of infringement cases.

Selecting a Strong and Distinctive Trademark

Navigate the complexities of trademark selection with our insightful guide. Discover the five levels of trademark distinctiveness and learn how to choose a mark that not only stands out but also offers robust legal protection. Perfect for businesses seeking to secure their brand identity.

Protect Your Brand: Registering Your Company vs. Registering Your Trademark

Navigate the complexities of trademark registration and protection with expert legal guidance. Ensure your brand’s unique identity and avoid potential legal issues with our comprehensive trademark services.

Frequently Asked Questions – Patents 

Frequently Asked Questions - Patents What is a Utility Patent? A patent is a legal document that provides the owner with a legal monopoly over the invention claimed in the patent.  In particular, it provides the patent owner with the right to prevent others from...

Traps for the Unwary Trademark Owner (Part Three) – Trademark Auctions

Internet trademark auctions are virtual marketplaces where people buy and sell registered trademarks from around the world. Some of these auction websites attempt to sell U.S. trademark registrations. Many of these registrations are invalid and worthless. Make sure...

Trademark and Copyright Symbols

Trademark and Copyright Symbols: What are they? When can and should you use them? You’ve seen the symbols – ®, TM, SM, © – but you aren’t quite sure what they mean or when to use them. Here’s a primer. ® - The Registered Trademark Symbol The ® symbol (an “R” inside a...

Registering Your Logo in Black and White

Pro Trademark Tip: Register your logo in black and white.  Are you considering filing a trademark application for your logo with the United States Patent & Trademark Office?  Let’s talk about why you might want to consider filing for coverage of the logo in black...

Intellectual Property Basics: Protecting Your Creative Assets

Your intellectual property (IP) has the potential to be an extremely valuable asset, and understanding the fundamentals of IP rights is crucial for safeguarding and leveraging your innovations and creations. So what constitutes IP? What should you consider...

Traps for the Unwary Trademark Owner (Part Two) – Spoof Trademark Calls

Scammers have become increasingly sophisticated.  They have even educated themselves on the U.S. Patent and Trademark Office’s filing system so that they can authoritatively call trademark customers and falsely claim to be from the USPTO calling about an issue with an...