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.

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.