On April 2, 2012, the United States Patent and Trademark Office announced the implementation of a new After Final Consideration Pilot. The AFCP will allow an examiner to consider and enter amendments submitted after a final rejection that will require new searching by the examiner.

For a long time the Patent Office has been monitoring the length of time that applications have been pending and the increasing number of applications filed. The Patent Office has proposed numerous solutions that attempt to bend the application curve, including accelerated examination, pre-appeal brief conferences, and limiting the number of requests for continued examinations and continuation applications. The AFCP is another effort that has the potential to help reduce the application volume.

Prior to the introduction of this pilot, an examiner would only enter an after final amendment in very limited circumstances. An examiner may enter such an amendment when the “amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner.” M.P.E.P. 714.13.

A common sequence of events during the prosecution of a patent application is as follows:  

  • The examiner issues a first office action rejecting all claims in view of reference A.
  • The applicant amends the claims to differentiate the invention from reference A.
  • The examiner performs a new search, identifies reference B and rejects all claims in view of reference B. Because the rejection and search were made in response to an amendment by the applicant, the rejection is final.
  • The applicant recognizes that the invention can be easily distinguished from reference B by another amendment and submits the amendment to the examiner within 2 months of receiving the final office action.
  • However, the examiner feels that the amendment will require additional searching to verify that the newly amended claim is valid in view of the prior art. As a result, the examiner will only issue an advisory action stating that the amendment will not be entered because the amendment will require the examiner to perform an additional search.
  • The applicant must now file a continuation or request for continued examination, along with the required fees, in order to have the amendment entered and considered by the examiner.

Since the examiner was not permitted to enter and consider the amendment, this policy by the Patent Office contributed to an increase in the amount of time that applications remained pending. It also increased the cost that an inventor faced in obtaining a patent.

The AFCP offers a potential solution to help both issues. Under the AFCP, the examiner is now permitted to enter an after final amendment when:  

  • The amendment places the application in condition for allowance by incorporating limitations from objected-to claims into independent claims, if the new claim can be determined to be allowable with only a limited amount of further consideration or search.
  • The amendment can be determined to place the application in condition for allowance with only a limited amount of further search or consideration, even if new claims are added without canceling a corresponding number of finally rejected claims.
  • The amendment can be determined to place the application in condition for allowance by adding new limitation(s) which require only a limited amount of further consideration or search.

The AFCP grants the examiner an additional 3 hours to consider the amendment and perform any additional search. As a result, if an Applicant can introduce an amendment that will differentiate the claims from a newly cited reference and an extensive prior art record has already been presented to the examiner, it is likely that the examiner will enter the amendment and move the application on to allowance.

While the AFCP is not as elaborate as other proposals made by the Patent Office, it has the potential to be a practical solution that will reduce the number of applications pending at the PTO and reduce the cost of the patent application process.

Christopher H. Strate is an Associate in the Gibbons Intellectual Property Department. Charles A. Gaglia, Jr., Counsel to the Gibbons Intellectual Property Department, co-authored this post.