The U.S. Patent & Trademark Office (USPTO) has a patent-related pilot program called the After Final Consideration Pilot 2.0 or “AFCP 2.0”. How does this AFCP program work, and how can these requests be made? This article addresses those basic questions.
Basic Contours of the Pilot Program
AFCP 2.0 is meant to foster compact prosecution. It aims to reduce the number of requests for continued examination (RCEs) and to foster examiner-applicant collaboration. To do that, the program authorizes additional time for examiners to search and/or consider qualifying responses after a final rejection. The program also involves an examiner-initiated interview if the response does not result in allowance. Some information about the program is available from the USPTO online, including some limited answers to frequently asked questions (FAQs).
The crux of the AFCP 2.0 program is that it expands the amount of time examiners have to act on a given after-final amendment to a pending patent application. Understanding how time constraints work during examination and how AFCP alters them is therefore important in order to grasp how the program may or may not benefit an applicant. However, the USPTO does not widely publicize how much time examiners have to begin with to consider an after-final response, or how much additional time is provided. These time constraint matters are taken up below.
Currently, participation in the program is free, but the USPTO has proposed an official fee requirement intended to go into effect in 2025.
As a pilot program, AFCP is implemented yearly. But it has been renewed every year since its inception.
Examination Time Constraints
The first point to understand is the “count” system that governs USPTO examiners’ work. Essentially, it is tied to a collective bargaining agreement with the unionized examination corps. This count system is complex. But the most important feature is that it basically allocates a fixed amount of time for examiners to spend on a patent application, based upon pre-determined levels of technological complexity and the particular assigned examiner’s seniority status. This averages only about nineteen or twenty hours per application, but can be much less or much more than that for a given application. For instance, some examples of these time variations by technology area are given here and here. And an explanation of examiner seniority-based variations is found here.
Under normal circumstances (not under the AFCP program), an examiner may spend only about 30 minutes considering an after-final response.
The USPTO’s Federal Register notice and web page about AFCP mentions only “a set amount of time”, without specifying the length of additional time allocated. But relevant information is available elsewhere. In actuality, the additional examination time allocated for each granted AFCP 2.0 request is 2-3 hours. For utility and plant applications, there is an additional two hours of substantive search/consideration time plus one extra hour of time for an interview (which can be reallocated for substantive examination potentially, in the absence of an interview). For design applications, there is only one additional hour of substantive examination time, plus the same one hour of additional interview time (which can also be reallocated in the absence of an interview).
There are a number of requirements to for an after-final amendment to qualify for this pilot program. The most important ones are:
- There is an outstanding final rejection of at least one claim
- An amendment is made to at least one independent claim that does not broaden the scope of that independent claim in any aspect
- A certification and request (on USPTO form PTO/SB/434) is filed with the responsive amendment
Importantly, the required amendment to an independent claim does not have to be a narrowing amendment. It could merely be a clarification or correction of an error. Also, the program does not preclude a broadening amendment to another claim.
How to Make an AFCP Request
The key to making an AFCP request is to submit the required USPTO form along with an after-final amendment that meets the eligibility requirements discussed above. These requests must be filed electronically and not in hard copy by mail. The request form looks like this:
Currently, there is no fee for this request. However, the USPTO has proposed an official fee requirement intended to go into effect in 2025.
The certification on the form indicates that the applicant is willing and able to conduct an interview. Nonetheless, substantive program materials contemplate that an applicant might later be unavailable or refuse an interview—contrary to what is stated at the end of section 8 of the USPTO’s certification and request form.
Is an AFCP Request Worthwhile?
Is it worthwhile, or a good idea, to make an AFCP request? Every case is different and there is no one correct approach. From an applicant’s perspective, an AFCP request is relatively easy to file. And the time needed for an interview may be short and not by itself a deterrent to making a request. So an AFCP request is often worth making if an independent claim is being amended. Whether it is desirable to amend a claim merely to qualify for AFCP 2.0 is another question entirely, and not something automatically recommended as a general matter (but possibly worthwhile in some circumstances).
This program tends to be most effective with relatively straightforward amendments. Or with amendments resulting from an examiner interview. Amendments implementing something essentially already suggested by the prosecution history tend to get a lot of benefit from it.
But the additional time allocated by an AFCP 2.0 request is not that large. That is particularly true if significant searching and consideration by the examiner is necessitated by a given response. Substantial, complex, or extensive amendments and/or arguments often require more examiner time to evaluate. These might not be resolved through the program. Applicants cannot expect miracles. All this is to say that after-final practice runs up against the count system and the time examiners are willing and able to allot to handling applicant responses. AFCP 2.0 may give examiners a little more time, but whether that additional time is enough time will vary widely on a case-by-case basis.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.