By Donald Zuhn –
USPTO Extends After Final Consideration Pilot 2.0 Program
Last week, the U.S. Patent and Trademark Office indicated on its website and through a Patents Alert e-mail that the After Final Consideration Pilot 2.0 (AFCP 2.0) program has been extended through September 30, 2016. The AFCP, which was implemented in April 2012 (see "USPTO to Assess After Final Consideration Pilot Program"), modified in May 2013 (see "USPTO News Briefs"), and extended last year (see "USPTO News Briefs") provides examiners with a limited amount of non-production time -- three hours for utility and reissue applications -- to consider responses filed following a final rejection.
In implementing the original AFCP, the Office described six limited situations in which further amendments or arguments may be considered under the AFCP:
1. The amendment places the application in condition for allowance by canceling claims or complying with formal requirement(s) in response to objection(s) made in the final office action.
2. The amendment places the application in condition for allowance by rewriting objected-to claims in independent form.
3. The amendment places the application in condition for allowance by incorporating limitations from objected-to claims into independent claims, if the new claim can be determined to be allowable with only a limited amount of further consideration or search.
4. The amendment can be determined to place the application in condition for allowance with only a limited amount of further search or consideration, even if new claims are added without cancelling a corresponding number of finally rejected claims.
5. The amendment can be determined to place the application in condition for allowance by adding new limitation(s) which require only a limited amount of further consideration or search.
6. The response comprises a perfected 37 CFR 1.131 or 37 CFR 1.132 affidavit or declaration (i.e. a new declaration which corrects formal defects noted in a prior affidavit or declaration) which can be determined to place the application in condition for allowance with only a limited amount of further search or consideration[.]
When the Office implemented the AFCP 2.0 program, it described three main differences between the original AFCP and the AFCP 2.0: (1) an applicant must file a request to participate in the AFCP 2.0; (2) a response after final rejection under the AFCP 2.0 must include an amendment to at least one independent claim; and (3) when a 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. The requirements for participating in the AFCP 2.0 are as follows:
(1) a transmittal form that requests consideration under AFCP 2.0 (the Office suggests that applicants use form PTO/SB/434);
(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 (according to the notice, "willing and available" means that the applicant is able to schedule the interview within ten (10) calendar days from the date the examiner first contacts the applicant);
(4) any necessary fees (e.g., a request filed more than three months after the mailing of a final rejection must include the appropriate fee for an extension of time under 37 C.F.R. § 1.136(a)); and
(5) the required papers must be filed via the EFS-Web.
The Office has noted that applicants submitting AFCP 2.0 requests will receive a specialized form (PTO-2323) in response to requests. The form will communicate the status of the submission, and if applicable, also accompany an interview summary. Additional information regarding the AFCP 2.0 program can be found on the Office's AFCP 2.0 webpage.
USPTO Extends Quick Path Information Disclosure Statement Pilot Program
The U.S. Patent and Trademark Office also announced last week on its website and through a Patents Alert e-mail that the Quick Path Information Disclosure Statement (QPIDS) pilot program has also been extended to September 30, 2016. The QPIDS pilot program, which was implemented by the Office in May of 2012 (see "USPTO Announces Quick Path Information Disclosure Statement (QPIDS) Pilot Program") and extended last year (see "USPTO News Briefs"), allows applicants to have an Information Disclosure Statement (IDS) considered after the issue fee has been paid and without having to file a Request for Continued Examination (RCE).
Under the QPIDS pilot program, an examiner will consider IDS submissions made after the issue fee has been paid (and provided that the conditions below are met) to determine whether prosecution should be reopened. Where the examiner determines that no item of information in the IDS necessitates reopening prosecution, the Office will issue a corrected notice of allowability and the application will pass to issue, thereby eliminating the delays and costs associated with RCE practice. To be eligible to participate in the pilot program, an application must be an allowed utility or reissue application for which the issue fee has been paid and the patent has not yet issued, and a QPIDS submission must be made electronically via the EFS-Web. The QPIDS submission must include the following:
• A transmittal form that designates the submission as a QPIDS submission (e.g., form PTO/SB/09);
• An IDS accompanied by a timeliness statement set forth in 37 CFR 1.97(e), with the IDS fee set forth in 37 CFR 1.17(p) -- note: the QPIDS pilot program does not eliminate the requirements that an IDS be accompanied by the statement of 37 C.F.R. § 1.97(e)(1) or (2) and the fee set forth in 37 C.F.R. § 1.17(p)).
• A Web-based ePetition to withdraw from issue under 37 CFR 1.313(c)(2), with the petition fee set forth in 37 CFR 1.17(h); and
• An RCE, which will be treated as a "conditional" RCE, with the RCE fee under 37 C.F.R. 1.17(e) -- note: the IDS fee under 37 C.F.R. § 1.17(p) will be automatically returned if the examiner decides to reopen prosecution, necessitating that the RCE be processed, and the RCE fee will be automatically returned if the examiner determines that prosecution need not be reopened.
Additional information regarding the QPIDS pilot program can be found on the Office's QPIDS webpage.
USPTO Implements Automated Interview Request System
Last month, the U.S. Patent and Trademark Office announced via a Patents Alert e-mail that it was implementing a new online interview scheduling tool, USPTO Automated Interview Request (AIR). USPTO AIR allows Applicants to request an in-person, telephonic, or video conference interview with an Examiner for their pending patent application by submitting an online form. Additional information regarding USPTO AIR can be found here.