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  • Cassandra L. Wilkinson

After Final Rejection Patent Practice Before the USPTO


Under U.S. Patent and Trademark Office (USPTO) current practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an Information Disclosure Statement (IDS). A final rejection closes prosecution on the merits, and any reply to the final rejection is limited to an appeal to the Patent Trial and Appeal Board (PTAB) or in limited situations further amendments or arguments may be considered. Once a final rejection has been entered in an application, there is no right to unrestricted further prosecution. The filing of an amendment after final rejection does not stop the running of the statutory period for reply to the final rejection, unless the examiner holds the claims to be in condition for allowance. Accordingly, if a Notice of Appeal has not been filed properly within the period for reply, or any extension of this period obtained, the application will become abandoned. The time for reply to a final rejection is a 3-month shortened statutory period (SSP). If the reply is filed within 2 months of the date of the final Office action, the SSP will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later. AFTER FINAL CONSIDERATION PILOT 2.0 The USPTO has modified the After Final Consideration Pilot Program (AFCP) to create the After Final Consideration Pilot Program 2.0 (AFCP 2.0). AFCP 2.0 began on May 19, 2013, as part of the USPTO’s on-going efforts towards compact prosecution. The goal of AFCP 2.0 is to reduce pendency by reducing the number of Requests for Continued Examination (RCE) and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application. There is no additional fee required to request consideration of an amendment after final rejection under AFCP 2.0, but any necessary existing fee, e.g., the fee for an extension of time, must still be paid. There are three main differences between AFCP and AFCP 2.0 (1) an applicant must request to participate in AFCP 2.0, (2) a response after final rejection under AFCP 2.0 must include an amendment to at least one independent claim, and (3) the examiner will request an interview with the applicant to discuss a response, if the response did not result in a determination that all pending claims are in condition for allowance. To be eligible for consideration under AFCP 2.0, the applicant must file a response which includes a request for consideration under the pilot and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect. Examiners will use their professional judgment to decide whether the response can be fully considered under AFCP 2.0, such as determining whether any additional search is required and can be completed within the allotted time, in order to determine whether the application can be allowed. The examiner is authorized additional time to search and/or consider responses after final rejection. Examiners will also use the additional time to schedule and conduct an interview with the inventors and/or their counsel to discuss the results of their search and/or consideration, if the response does not place the application in condition for allowance. Additional time of up to 3 hours is given for utility applications, or up to 1 hour (plus any time attributed to an interview) for design applications, and a ten (10) day adjustment of the docket management clock can be made regardless of whether consideration of the amendment results in allowance of the application. AFCP 2.0 is scheduled to run through September 30, 2013. A request to consider an amendment after final rejection under AFCP 2.0 must be filed on or before September 30, 2013. The USPTO may extend AFCP 2.0 (with or without modifications) depending on feedback from the participants and the effectiveness of the pilot program. UPDATE: The AFCP 2.0 program has been extended through December 14, 2013. If you have a final Office Action, contact an HJK attorney to discuss an amendment under AFCP 2.0.

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