December 2024 Newsletter

The End of AFCP 2.0: What It Means for Patent Applicants

by Melissa L. Kleine and Nicholas L. Lush

Summary

After ten years as a pilot program, the United States Patent and Trademark Office (USPTO) decided not to renew the After Final Consideration Pilot Program 2.0 (AFCP 2.0) and to allow it to expire. Effective December 14, 2024, the program stopped accepting new applications. Patent applicants may therefore need to modify prosecution strategies after receiving final office actions.

What was the AFCP 2.0?

The goal of the AFCP 2.0 was to improve pendency by reducing the number of Requests for Continued Examination (RCE) filed and encouraging increased collaboration between applicants and examiners to advance prosecution of applications effectively. AFCP 2.0 did not require additional fees for an applicant to request consideration of an amendment after final rejection, although the amendment did require a non-broadening amendment to an independent claim. (https://www.federalregister.gov/documents/2024/10/01/2024-22481/extension-and-termination-of-the-after-final-consideration-pilot-program-20)

Why is the ACFP 2.0 Expiring?

With approximately 60,000 requests filed annually, and without additional fees to compensate for the increased time spent on each case, the USPTO incurred high costs to sustain the pilot program. For example, in fiscal year 2022 alone, the USPTO estimated it expended more than $15 million in costs associated with examiners considering the merits of AFCP 2.0 submissions.

When setting and adjusting patent fees for fiscal year 2025, the USPTO proposed a new fee to recuperate costs affiliated with submitting a request for consideration under AFCP 2.0. Commenters on the proposal expressed concerns about the AFCP 2.0 and the proposed fee. Based on the volume of the negative public comments, the USPTO decided to allow AFCP 2.0 to expire. (Id.)

What are the future alternatives?

Applicants still have options after receiving a final office action. Filing a Request for Continued Examination (RCE) remains a viable and popular option for applicants who wish to continue the examination after receiving a final rejection. Although a RCE is more costly than AFCP 2.0, it essentially restarts prosecution, providing more opportunities to prosecute claim language with the examiner.

An applicant can alternatively file amendments to place the application in condition for allowance or a better position for appeal in response to the final office action without filing an RCE. The USPTO will consider these after-final amendments and either issue a Notice of Allowance (NOA) or an advisory action if the examiner determines the response does not place the application in condition for allowance. If an advisory action is issued, the applicant may decide to proceed with an RCE or Notice of Appeal. Applicants also retain the option to submit a Request for Pre-Appeal Brief Review when filing a Notice of Appeal, providing the opportunity to have a panel determine whether an issue for appeal is present in the record.

Furthermore, the examiner may permit an interview with the applicant after final rejection to expedite the prosecution process, although such interviews are not intended for restating arguments or discussing new limitations which would require more than nominal reconsideration or new search. (Id.; See also sections 713.09 and 714.12 of the Manual of Patent Examining Procedure (9th ed., Rev. 07.2022, February 2023).)

In summary, although AFCP 2.0 has now ended, there are several methods to continue prosecution of a patent application after receiving a final office action.

Please contact your Andrus attorney with any questions you may have regarding these changes.

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