AFCP 2.0 Extended: Your Mileage May Vary

On October 12, 2021, the USPTO extended its program for after-final patent prosecution observe, AFCP 2.0, to September 30, 2022. The USPTO initiated the “pilot” program in 2013, to hurry up prosecution and to extend contact between Examiners and candidates. Though the USPTO has not issued statistics concerning the outcomes of this system, candidates nonetheless invoke AFCP 2.0 with some frequency. The USPTO has renewed this system annually since inception.

This renewal offers a well timed alternative to debate briefly what may make participation within the AFCP 2.0 program worthwhile.

AFCP 2.0 Necessities

For an applicant, the 2 components of a grantable AFCP 2.0 request are:

  • A narrowing modification to no less than one unbiased declare; and

  • A said willingness to take part in an Examiner interview promptly upon the Examiner’s request.

After-final responses not assembly the above two necessities is not going to obtain AFCP 2.0 therapy. Reissue purposes and purposes present process reexamination are usually not eligible for AFCP 2.0 therapy in any occasion.

An applicant might imagine that allowance is shut, and requires solely minor amendments to incorporate options that the Examiner ought to have uncovered (in the event that they existed) when performing a previous artwork search earlier in prosecution. Prior communications with the Examiner might strengthen the applicant’s perception. In that occasion, AFCP 2.0 can present an environment friendly path to allowance.

A grantable AFCP 2.0 request (which incorporates the 2 necessities listed above) offers Examiners extra time to behave on an applicant’s response after the Examiner has issued a last rejection. When an Examiner receives a correct AFCP 2.0 request, s/he determines whether or not additional search and/or consideration of the applicant’s after-final response is required and, if that’s the case, how intensive the search and/or consideration can be. If the Examiner thinks that the time concerned wouldn’t be extreme, and {that a} dialogue with the applicant may result in allowance, the Examiner will contact the applicant or the applicant’s consultant to schedule an interview.

If the Examiner determines that the time concerned can be extreme, dealing with of the after-final response reverts to the standard after-final course of, with the Examiner issuing an advisory motion.

If an applicant believes that substantial declare amendments are essential, AFCP 2.0 possible is not going to be useful. Notably if the declare amendments take the appliance in a path the Examiner might not have contemplated in doing the preliminary prior artwork search, the Examiner most likely will deny the request as requiring an excessive amount of further time.

Even when the declare amendments are minor, if the Examiner thinks that the amendments fall outdoors the scope of the unique prior artwork search, the Examiner may nicely conclude that the extra effort and time required would exceed the additional time the AFCP 2.0 program affords the Examiner.

There are no less than two ways in which an applicant and an Examiner is not going to have a gathering of the minds, resulting in the applicant’s failure with AFCP 2.0:

  • The applicant and the Examiner might disagree concerning the extent of the applicant’s proffered amendments.

  • The Examiner might not have carried out a adequate search earlier in prosecution, and now has to make up for that, however doesn’t have the time.

Takeaways

With a fairly cooperative Examiner and appropriate indications of progress towards allowance, AFCP 2.0 can present a path to allowance via minor amendments to unbiased claims. Substantial declare amendments, notably ones that aren’t telegraphed earlier in prosecution, possible would require a whole lot of further search time, and so is not going to result in allowance. Success additionally will depend on the standard of the preliminary prior artwork search that the Examiner did.

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