What To Do Now That The AFCP (After Final Consideration Program) Is Ending?
The After Final Consideration Pilot 2.0 Program (AFCP) offered to patent applicants by the U.S. Patent and Trademark Office is ending on December 14, 2024. The program began in 2013 and was originally slated to last only 1 year. Its 11 years of existence shows its appeal to applicants in responding to final Office Actions, as does the USPTO’s reporting that 60,000 requests have been filed annually since 2016. What are alternative options to those 60,000 yearly requests now that the AFCP program will soon cease to exist?
Applicants have multiple options other than AFCP aimed to expedite examination of patent applications and help maximize chances of a desirable, patentable outcome once a final Office Action has been mailed. Some of the most effective options are discussed further below along with potential pitfalls.
Tactic: File a final Office Action response within 2 months
There is no guarantee to interview an examiner after final Office Action without the AFCP program. However, filing a response to final Office Action within 2 months of the Office Action’s mailing date will ensure communication from the examiner, typically an Advisory Action or a Notice of Allowance, and without the applicant needing to pay any time extension fee even if it would otherwise be due. If a response is filed after the 2 month due date, there is no guarantee that the examiner will act on the response before the 6 month final due date, and time extension fees may be due.
There is no cost to timely file a response, so this tactic is cost-effective.
Tactic: Interview the USPTO examiner
Without AFCP, examiners have discretion to allow or deny an interview after a final Office Action, but the option for interview is available and free. Open communication with the examiner regarding possible arguments and/or claim amendments before filing a response will usually yield a more effective paper that is more persuasive to the examiner. An interview may also provide the applicant with information to dissuade the applicant from responding to the Office Action at all, i.e., deciding to abandon the application with or without filing a continuation application, before going through the time and expense of filing a response and possibly also an expensive Request for Continued Examination (RCE) or Notice of Appeal.
Further tips for conducting examiner interviews are discussed in this previous article.
Tactic: Plan ahead when a Non-Final Office Action is mailed
Without the AFCP’s guarantee of an examiner interview after final Office Action, interviews with examiners after non-final Office Actions may gain more importance than they have had for over 10 years.
Tactic: Pre-Appeal
Similar to filing an AFCP request, filing a pre-appeal (request for review and up to 5 pages of comments) provides the examiner more time to consider a filed paper than the examiner would otherwise have available for a filing after final Office Action. Pre-appeal also provides for two additional examiners to review the applicant’s filed comments, which may be particularly useful in instances where review of a rejection by a fresh set of eyes may help expose its weaknesses.
However, pre-appeal comes with the cost of filing a Notice of Appeal. Additionally, all pre-appeal arguments must be provided in no more than 5 pages, which may be challenging when there are numerous rejections, rejections are particularly complicated, and/or remarks have not been previously filed by the applicant that can be, and are encouraged by the USPTO to be, referenced in the pre-appeal comments.
Tactic: Petition to the Director
After an Advisory Action has been mailed in reply to a final Office Action response, an applicant may file a petition to the director under 37 CFR 1.181 for further review of the Office Action’s finality or the examiner’s non-entry of claim amendments. However, filing the petition does not toll the 6 month period of Office Action reply. Given the unpredictability of petition decision timing, an applicant has a good chance of still needing to file an RCE or a Notice of Appeal if the petition is not acted upon before the 6 month final due date.
Petitions to the Director are discussed further in this previous article.
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