[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.
[[Page 29118]]
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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