On October 1, 2024, the United States Patent and Trademark Office (USPTO) announced that it is terminating its After Final Consideration Pilot Program 2.0 (AFCP 2.0), which is set to expire on December 14, 2024. The expiration follows a brief extension from September 30, 2024 to December 14, 2024 to allow applicants to adjust to the upcoming program termination in the event they are in the process of preparing a response under the AFCP 2.0.
Under AFCP 2.0, applicants can file a response to a final office action that includes a non-broadening amendment to at least one independent claim and, if the examiner determines that not all pending claims are in a condition for allowance, the examiner will schedule an interview with the applicant. No additional fees for filing a response under AFCP 2.0 have been required.
AFCP 2.0 was created on May 19, 2013, with the goal “to improve pendency by reducing the number of Requests for Continued Examination (RCE) and encourage increased collaboration between the applicant and examiner to effectively advance prosecution of the application.” Although the initial pilot program was scheduled to run for one year, it has been repeatedly extended over the years, until now.
The USPTO’s decision to terminate its AFCP 2.0 program is largely due to its high cost of administering the program without receiving any payment in return, which was estimated to cost more than $15 million in fiscal year 2022 alone. Earlier this year, the USPTO proposed a new fee for filing a request under AFCP 2.0 that would range from $100 to $500 depending on the entity status. However, the USPTO decided to terminate the program after receiving feedback from commenters expressing concerns about AFCP 2.0 and the proposed new fee. Thus, applicants interested in filing a response under AFCP 2.0 must do so on or before December 14, 2024.
Moving forward, applicants who disagree with a final office action rejecting their claims can still file a standard After Final Response, but whether the Examiner enters the amendment and finds the response sufficient to result in allowable claims remains at the discretion of the examiner. With the discontinuance of the AFCP 2.0 program, there may be little incentive for an examiner to consider an After Final Response submission. Also, unlike under AFCP 2.0 where an examiner may be required to schedule an interview, an examiner can refuse an applicant’s request for an interview following a final office action outside of this program.
Although an RCE remains an option, this option can be expensive and necessitates a relatively high filing fee – which may only increase with the USPTO’s proposal for significant fee increases for 2025. As an alternative, the USPTO offers another pilot program that involves filing a Pre-Appeal Brief Request for Review, which is considered by a panel of examiners including the supervisory patent examiner (SPE), the examiner, and at least one additional examiner or a quality assurance specialist. The Pre-Appeal Brief Request for Review approach can be particularly helpful by quickly advancing the case in situations where the examiner and applicant have reached an impasse and/or the examiner’s rejection is clearly erroneous.
A Pre-Appeal Brief Request for Review must be filed at the time of filing a Notice of Appeal and is limited to five pages of concise argument. There is a Notice of Appeal fee ranging from $168 to $840, depending on entity status, but there is no additional fee for submitting a Pre-Appeal Brief Request for Review. The panel typically renders a decision within about one to two months. If the Pre-Appeal Brief Request for Review is successful, the rejection(s) will be reversed and the application will either be allowed or a new office action will issue. If the Pre-Appeal Brief Request for Review is unsuccessful, i.e., there remains at least one issue for appeal, an applicant can decide to file an RCE (which withdraws the application from appeal and reopens prosecution) or can continue with the appeal process by filing a complete appeal brief.
If an appeal brief is filed, the appeal proceeds so that the Patent Trial and Appeal Board (PTAB) can render a decision. This requires a further “forwarding” fee ranging from $472 to $2,360 (depending on entity status) once the briefing is complete, and the fee for an optional request for oral hearing ranges from $272 to $1,360 (depending on entity status). A decision by the PTAB takes, on average, 12 months after the PTAB receives the appeal (which can be several months after filing the Notice of Appeal). However, a petition under the Fast-Track Appeals Pilot Program along with a $420 petition fee can reduce the 12-month period by a half. During the time period after filing an appeal brief but before a decision is rendered, the applicant may decide to withdraw the case from appeal by filing an RCE, thereby reopening prosecution.
In summary, while the USPTO is allowing the AFCP 2.0 program that has run for more than 10 years to finally expire, other avenues remain open to advance a rejected application to allowance, including by filing a Notice of Appeal with a Pre-Appeal Brief Request for Review.
[View source.]
