For the last decade, the After Final Consideration Pilot Program 2.0 (AFCP) has been an option for U.S. patent applicants to use when their applications receive a Final Office Action. Before the AFCP existed, applicants were able to file a response within the two-month period from the date of the Final Office Action, which prompted a response from the examiner. However, if the issues were too involved, the examiner’s reply would often be in the form of an Advisory Action, which would provide little insight into the examiner’s mindset while still necessitating filing of a Request for Continued Examination (RCE) to continue the application’s examination. Often, the applicant had to pay an extension fee when filing the RCE.
When introduced in 2013, the AFCP was trumpeted as a program to be used to reduce the frequency of RCE filings. In particular, the AFCP was set up to encourage a narrowing claim amendment, while giving the examiner more time for consideration and interaction via an examiner interview. Over the years, however, it became apparent that the amount of time each examiner was given to spend on an AFCP filing was insufficient to conduct complex searches and analyses. Thus, applicants would still find themselves needing to file a RCE after the AFCP filing, prompting some to ask whether an AFCP is worth it? In short, yes.
The AFCP program is a trade-off between the examiner and the applicant. The applicant narrowly amends a claim in exchange for more time of the examiner’s consideration/interaction. To that end, even if a RCE needs to be filed, the applicant can gain valuable insight from the examiner, which can be quite helpful in advancing prosecution, and potentially shortening the path to allowance.
We are happy to help your client assess whether an AFCP filing is right for their situation.
John is a shareholder in Fredrikson & Byron’s Intellectual Property Group. He is registered to practice before the U.S. Patent and Trademark Office. His practice focuses on patent preparation and prosecution, counseling ...