by Dennis Crouch
Termination of AFCP 2.0 Program: The USPTO has announced that the After Final Consideration Pilot (AFCP) 2.0 program will expire on December 14, 2024. This decision comes after the Office proposed implementing a new fee for AFCP 2.0 requests earlier this year, which received significant pushback.
Take-Home Points for Patent Practitioners:
- AFCP 2.0 has been popular with over 60,000 requests filed annually for the past 8 years.
- Last day for AFCP 2.0 requests: December 14, 2024
- Reason for termination: Program is costly and applicants do not provide any direct fee recovery.
- Proposed fee ($500 for large entities) was met with significant push-back.
As the USPTO bids farewell to this popular program, patent practitioners are focusing on reshuffling their after-final strategies.The AFCP 2.0 program, introduced in May 2013, was designed to enhance communication between examiners and applicants immediately following a final rejection and to potentially reduce the need for RCEs and appeals. Under the program, examiners were given additional time (~ 3 hours) to consider responses that included a non-broadening amendment to at least one independent claim.
The USPTO cited economic inefficiencies as a primary reason for terminating the program. In the notice, the Office stated: “A large part of the AFCP 2.0’s high usage is due to economic inefficiencies where participants receive program benefits without paying for the cost of the service directly.” The office provided an estimated cost of $15 million in examiner time to review the merits of 60k requests (this does not count other administrative costs) — the total here works out to $250 per request.
The decision to terminate AFCP 2.0 rather than implement the proposed fee structure suggests that stakeholders were not receptive to paying for participation in the program. This outcome aligns with the USPTO’s statement in its earlier fee-setting notice: “If there is sufficient public support for the proposed fees, the USPTO would favor continuing the pilot program.” However, the USPTO explained that if it was unable to recover the costs of the AFCP 2.0 from participants, the USPTO would consider terminating the program.
I’ll note here that a substantial amount of the push-back on the new fee was associated with seeking some guarantee that paying a fee would guarantee an after final interview. See, for instance, ABA comments to the fee proposal. PTO-P-2022-0033-0023_attachment_1.
Although limited, there are still a number of avenues for after-final practice, although these are typically either (1) less likely to be viable or (2) costly (and often both):
- Amendments that place the application in condition for allowance or in better form for appeal “may” still be entered under 37 CFR 1.116(b), largely at the discretion of the patent examiner. I would expect examiners to only permit (1) canceling of claims and accompanying edits to rewrite dependent claims and independent; and (2) correcting clear errors that raised 112 or 101 concerns.
- Applicants can still request interviews with examiners after final rejection at no additional charge (see MPEP § 713.09).
- Pre-appeal brief requests for review remain available (see MPEP § 1204.02). Although this conference request does not directly require an additional fee, applicant must have filed a notice of appeal ($840).
In addition, applicants can also file a request for continued examination (RCE) or simply appeal to the PTAB — both courses are relatively expensive and require both fees and cognizable arguments as to why the invention is patentable. Those hurdles mean that this is also the stage where the rubber-meets-the-road and many patent applications are abandoned
In the end, I expect that termination of AFCP 2.0 will lead to an increase in RCE filings as well as appeals — neither of which promote the USPTO’s approach to compact prosecution. It will obviously be quite important for applicants to carefully consider their after-final strategies — and follow trends on this closely to see what examiners are doing. I.e., is there room to maneuver without paying fees via after final amendment or after final interview.
Although examiners were given extra time under the AFCP program, many examiners felt that it was insufficient time to actually consider the merits of arguments and amendments presented by the applicant. And, those examiners had the freedom to refuse to participate. In addition, I have heard that some examiners felt pressure from applicants to agree to allow particular amendments if they filed an RCE — again even though they did not have adequate time to fully consider the merits.