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June/1/2012

US Patent Office Initiates New Pilot Program to Streamline Examination By Elaine C. Berlin & Matthew B. Pickney

Elaine C. Berlin                      
Patent Attorney, Hoffman Warnick LLC              
eberlin@hoffmanwarnick.com
 
Matthew B. Pinckney
Patent Attorney, Hoffman Warnick LLC
mpinckney@hoffmanwarnick.com 

(From the June 2012 Newsletter)

US Patent Office Initiates New Pilot Program to Streamline Examination

The United States Patent and Trademark Office (USPTO) recently issued guidelines for a new pilot program geared towards compacting prosecution of patents and reducing the number of pending applications subject to continued examination (formally known as Request for Continued Examination (RCE) filings).  The new program is called the After Final Consideration  Pilot (AFCP), and is retroactively effective for all Amendments filed in response to a Final Rejection filed between March 25, 2012 and June 16, 2012.  The AFCP program provides patent examiners with the additional opportunity to consider and examine responses filed after a “final” rejection of a patent’s claims. 

Under US patent law, when a USPTO examiner objects to a patent application, that examiner typically rejects the patent application by issuing an office action (essentially, a formal rejection).  The applicant typically receives a first office action which is non-final, and is given the opportunity to respond to that non-final action without additional cost.  If the examiner does not find the response persuasive, the examiner may issue a “final” action.  The name is somewhat misleading, as the patent applicant still has options from this point: (1) The applicant can file an appeal to the Board of Patents Appeals and Interferences (BPAI), or (2) The applicant can file an Amendment After Final that includes amendments to the claims and/or arguments against the examiner’s rejection.  Under the second option, the examiner is not required to examine amended claims that necessitates further consideration and/or search of additional prior art.  In order to have amended claims examined in this case, the applicant must file a Request for Continued Examination (RCE), and pay a significant fee.  Under  the current rules, without the RCE and the fee, the Amendment After Final will not be entered.

Under the AFCP, the examiner is given up to three (3) hours to consider the applicant’s Amendment After Final to determine whether that Amendment places the application in condition for allowance.  In this pilot scenario, the examiner can review the Amendment After Final and determine whether the response can be fully considered within the allotted time frame (3 hours for plant and utility applications, 1 hour for design applications). 

The USPTO believes that this pilot program could help examiners to process those patent applications which are on the verge of being allowable.  As practitioners, we can hope that this pilot program will help to reduce the backlog in patent applications currently before the USPTO, and also reduce the number of RCE filings and fees that are unnecessarily required.  






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