[Federal Register Volume 78, Number 96 (Friday, May 17, 2013)]
[Notices]
[Pages 29117-29119]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-11870]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No. PTO-P-2013-0013]


After Final Consideration Pilot Program 2.0

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) has 
modified the After Final Consideration Pilot Program (AFCP) to create 
the After Final Consideration Pilot Program 2.0 (AFCP 2.0). Applicants 
who wish to participate in AFCP 2.0 must file a request to have a 
response after final rejection (which the examiner may have sufficient 
basis not to consider under current practice) considered by the 
examiner without reopening prosecution. The response after final 
rejection must include an amendment to at least one independent claim. 
The examiner will be allotted a set amount of time under AFCP 2.0 to 
consider the response. If the examiner's consideration of a proper AFCP 
2.0 request and response does not result in a determination that all 
pending claims are in condition for allowance, the examiner will 
request an interview with the applicant to discuss the response.

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There are thus three main differences between AFCP and AFCP 2.0: an 
applicant must request to participate in AFCP 2.0; a response after 
final rejection under AFCP 2.0 must include an amendment to at least 
one independent claim; and 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. 
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.

DATES: Effective Date: May 19, 2013.
    Duration: AFCP 2.0 will run from its effective date until 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.

FOR FURTHER INFORMATION CONTACT: Raul Tamayo, Senior Legal Advisor, 
Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy, by telephone at (571) 272-
7728, or by mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: As outlined herein, AFCP 2.0 involves 
responses filed after a final rejection pursuant to 37 CFR 1.116. Under 
current practice, examiners have sufficient basis not to consider many 
responses filed after a final rejection, including responses that would 
require further search and/or consideration. See, e.g., sections 714.12 
through 714.13 of the Manual of Patent Examining Procedure (8th ed. 
2001) (Rev. 9, August 2012) (MPEP). AFCP 2.0 allots a limited amount of 
time for examiners to consider responses after final rejection that 
include an amendment to at least one independent claim and require 
further search and/or consideration. Examiners will also use the time 
allotted to them under AFCP 2.0 to conduct an interview to discuss the 
response, for those responses that do not place the application in 
condition for allowance. AFCP 2.0 will help inform the USPTO as to 
whether authorization of the limited amount of time will reduce the 
number of RCEs. AFCP 2.0 replaces AFCP, which terminates on May 18, 
2013.

A. AFCP 2.0 Requirements

    In order to be eligible to participate in AFCP 2.0, an application 
must contain an outstanding final rejection and be (i) an original 
utility, plant, or design nonprovisional application filed under 35 
U.S.C. 111(a), or (ii) an international application that has entered 
the national stage in compliance with 35 U.S.C. 371(c). A continuing 
application (e.g., a continuation or divisional application) is filed 
under 35 U.S.C. 111(a) and is thus eligible to participate in AFCP 2.0. 
Reissue applications and reexamination proceedings are not eligible to 
participate in AFCP 2.0.
    A request for an examiner to consider an amendment after final 
rejection under AFCP 2.0 must include the following items: (1) A 
transmittal form, such as form PTO/SB/434, that identifies the 
submission as an AFCP 2.0 submission and requests consideration under 
AFCP 2.0; (2) a response under 37 CFR 1.116, including an amendment to 
at least one independent claim that does not broaden the scope of the 
independent claim in any aspect; (3) a statement that the applicant is 
willing and available to participate in any interview initiated by the 
examiner concerning the accompanying response; and (4) any necessary 
fees.
    Only one request for consideration under AFCP 2.0 may be filed in 
response to an outstanding final rejection. Second or subsequent 
requests for consideration under AFCP 2.0 filed in response to the same 
outstanding final rejection will be processed consistent with current 
practice concerning responses after final rejection under 37 CFR 1.116. 
In addition, all papers associated with this pilot program must be 
filed via the USPTO's Electronic Filing System-Web (EFS-Web).

1. Transmittal Form

    AFCP 2.0 requires applicants to specifically request consideration 
under the program. The USPTO has included this requirement in an effort 
to focus the program on applications that are more likely to benefit 
from the program. The requirement to request consideration should also 
improve the data generated on the effectiveness of the program. 
Applicants are advised to use form PTO/SB/434, which is available at 
http://www.uspto.gov/forms/index.jsp, to request consideration under 
AFCP 2.0. Use of this form will also help the Office to quickly 
identify AFCP 2.0 submissions and facilitate timely processing of such 
submissions. The Office of Management and Budget (OMB) has determined 
that, under 5 CFR1320.3(h), form PTO/SB/434 does not collect 
``information'' within the meaning of the Paperwork Reduction Act of 
1995.

2. Amendment

    A submission under AFCP 2.0 must include a response filed under 37 
CFR 1.116. The 37 CFR 1.116 response must include an amendment to at 
least one independent claim. The amendment may not broaden the scope of 
the independent claim in any aspect. For the purposes of AFCP 2.0, the 
analysis of whether an amendment to an independent claim impermissibly 
broadens the scope of the claim will be analogous to the guidance set 
forth in section 1412.03 of the MPEP for determining whether a reissue 
claim has been broadened.

3. Interview statement

    A submission under AFCP 2.0 must include a statement by the 
applicant that they are willing and available to participate in any 
interview initiated by the examiner concerning the response filed with 
the AFCP submission. Form PTO/SB/434 includes the required interview 
statement.

4. Any Necessary Fees

    A submission under AFCP 2.0 must also include any fees that would 
be necessary, consistent with current practice concerning an after 
final response under 37 CFR 1.116. For example, an AFCP 2.0 submission 
that is filed more than three months after the mailing of a final 
rejection must include the appropriate fee for an extension of time 
under 37 CFR 1.136(a).

B. Processing of AFCP 2.0 Submissions

    Upon receipt of the AFCP 2.0 submission, the examiner will review 
the submission to ensure that the transmittal form, amendment, 
interview statement, and any necessary fees are provided. If the 
submission is incomplete, then the examiner will process the submission 
consistent with current practice concerning responses after final 
rejection under 37 CFR 1.116.
    Upon verifying that the AFCP 2.0 submission complies with the 
requirements of the program, the examiner will perform an initial 
review of the amendment. During the initial review, the examiner will 
determine if additional search and/or consideration

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would be required to determine whether the amendment would distinguish 
over the prior art, and if such search and/or consideration would be 
possible within the time allotted to them under the AFCP 2.0 program. 
If additional search and/or consideration would be required but could 
not be completed within the allotted time, the examiner will process 
the submission consistent with current practice concerning responses 
after final rejection under 37 CFR 1.116, e.g., by mailing an advisory 
action.
    If the examiner determines that the amendment does not necessitate 
additional search and/or consideration, or if the examiner determines 
that additional search and/or consideration is required and could be 
completed within the allotted time, then the examiner will consider 
whether the amendment places the application in condition for allowance 
(after completing the additional search and/or consideration, if 
required). If the examiner determines that the amendment places the 
application in condition for allowance, then the examiner will enter 
the amendment and mail a notice of allowance. If the examiner 
determines that the amendment does not appear to place the application 
in condition for allowance, then the examiner will contact the 
applicant to schedule an interview to discuss the amendment.
    The interview will be conducted by the examiner, and if the 
examiner does not have negotiation authority, a primary examiner and/or 
supervisory patent examiner will also participate. Following the 
interview, the examiner will proceed with an appropriate response to 
the submission after final rejection according to current practice. If 
the applicant declines the interview, or is unable to schedule the 
interview within ten (10) calendar days from the date the examiner 
first contacts the applicant, then the examiner may proceed with an 
appropriate response to the submission after final rejection according 
to current practice.

Teresa Stanek Rea,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 2013-11870 Filed 5-16-13; 8:45 am]
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