The USPTO terminates “After Final Consideration Pilot Program 2.0 (AFCP 2.0)”

The United States Patent and Trademark Office (USPTO) recently announced its decision to end its AFCP 2.0 Program. The last day to file a request for participation in the program will be December 14, 2024.

 

Was the AFCP 2.0 effective?

In our experience, acceptance into the AFCP 2.0 Program was relatively Examiner-dependent and subjective. When it worked, the AFCP 2.0 Program allowed the Applicant to make clarifying and/or “minor” substantive amendments to the claims After Final, while giving the Examiner at least some additional searching time. As such, Examiners were at least less likely to readily dismiss any substantive claim amendments (made after Final) in an Advisory Action as “requiring further search and consideration.”

 

Why the decision to terminate the AFCP 2.0 Program?

The AFCP 2.0 Program is being terminated for economical reasons. According to the USPTO, the AFCP 2.0 Program has allegedly led to significant administrative costs to the USPTO, and a proposed fee structure by the USPTO aimed at offsetting said costs was met by public resistance.

 

Now what?

The decision to terminate the AFCP 2.0 Program will likely require Applicant to even more carefully consider whether to make claim amendments after receiving a Final Office Action.

With the AFCP 2.0 Program gone, the After-Final options remain to do one or more of the following:

  1. Request an Interview with the Examiner before taking any further actions to try and come to an agreement as to arguments and/or amendments to overcome the current rejections of record;
  2. File an After Final Response with claim amendments and an RCE;
  3. File an After Final Response without any substantive claim amendments;
  4. File a Notice of Appeal along with or without a Pre-Appeal Brief to introduce a third party into the review process;
  5. File an Appeal Brief;
  6. File an additional application to pursue claims of different scope; and/or
  7. Abandon the application.

 

Strategies to make Examination More Efficient and Avoid RCE/Extension fees

There are pros and cons to each of the above strategies. The best strategy, however, is to try and avoid being in a position After Final where the Examiner has not yet examined any subject matter of importance to the Applicant. This is further of increased importance given the upcoming January 2025 USPTO fee increases, which will make the Request for Continued Examination (RCE) and Extension fees more costly than ever.

To reduce the likelihood of RCE and Extension fees, we strongly recommend reviewing the Specification and corresponding foreign applications and making amendments / adding new claims as needed at various stages before receiving a Final Office Action, namely:

  1. At the time of filing the US application;
  2. Prior to receiving a first Office Communication from the USPTO;
  3. If/when responding to a Restriction and/or Election of Species requirement; and/or
  4. If/when responding to a Non-Final Office Action

 

At Laine IP, we aim to make US patent prosecution as efficient and effective as possible, while meeting our clients’ business objectives. If you have any questions on this article or on US patents generally, please contact a member of our US IP Team.

 

Author

Mark W. Scott
Thomas Öhman

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