Final Office Actions - Sometimes Final Is Not So Final

Patent prosecution is a back and forth dialogue to get the broadest coverage allowable. In order to keep from bogging down the system, the USPTO can issue a Final Office Action to close off prosecution. There are limited choices to responding to these Final Office Actions. A recent pilot program has created a new option – the After Final Consideration Pilot 2.0 (AFCP 2.0).

The traditional options included filing a Request for Continued Examination (RCE), Appealing and submitting a Response. An RCE reopens prosecution but comes with a sizable fee. As the RCE can be moved to the back of the Examiner’s docket the Examiner may not respond to the RCE for some time. Appealing the Office Action also requires its own related fees. While a submission for a Pre-Appeal Brief Conference can offer a quick response, such review works best only in those rare situations where there is clear error by the Examiner.

Filing a Response to a Final Office Action is a tricky proposition. The Applicant is limited in their ability to change the claims as there is no right to amend. Such a Response works well for situations where claims are canceled, amended to comply with formal requirements or objected to claims are rewritten in independent form. In other situations, the limitations on amendments may be too restrictive and an RCE may be required in order to have the amendments entered.

Timing of a Response to a Final Office Action is also an issue. Unless the Response is filed within two-months from the date of mailing, there is no guarantee that the Examiner will respond. As the Response does not stop the clock on the six-month period for reply, this may leave Applicants waiting impatiently for the Examiner’s response while they enter ever more expensive extension periods. The Advisory Action procedure, which can be invoked by filing the Response within two-months, helps to alleviate some of this concern but the restrictions on amendments are still present.

In an effort to help fill an unmet need left by these traditional options, the USPTO has created the AFCP 2.0. This program is intended to enhance communication between the USPTO and Applicants, and to help reduce the number of RCEs being filed.

Using the AFCP 2.0, an Applicant can submit a request for consideration under the program with a response to a Final Office Action which includes an amendment. If the request is granted, the Examiner considers the amendment and, if the amendment does not place the application in condition for allowance, the Examiner is to reach out to the Applicant in order to hold an interview to discuss the case.

The AFCP 2.0 requires an amendment to at least one independent claim. The amendment can introduce new elements to the claims that have not been considered previously. However, the claim’s scope may not be broadened in any way. Even with this limitation, this process provides more flexibility than previously allowed without an RCE.

Another key requirement is based on the amount of time the Examiner would need to consider the Response. The program gives Examiners an additional two to three hours. If the Examiner determines that this additional time is not sufficient to consider the amendments and arguments they can refuse the request.

No additional fees are required for the program. However, the request for consideration under AFCP 2.0 does not stop the clock on the six-month period for a response and the Applicant may enter extension periods waiting for a response from the Examiner. The USPTO recommends Applicants request a status update if the Examiner has not responded to the request within a month.

The AFCP 2.0 fills a void in the prior USPTO procedures in order to help move applications through prosecution. Given the ability to consider cases which can be handled swiftly Examiners are now able to devote their limited time to promptly address such applications. Additionally, Applicants can avoid costly fees further incentivizing participation in the program.