After receiving a final Office Action, a patent applicant typically has a decision to make whether to appeal the decision or to request continued examination by the Examiner assigned to the application. If allowance of the application can be achieved by correcting informalities, the Examiner usually permits that without the filing of a Request for Cotinued Examination (RCE). However, the Examiner will generally refuse to enter or consider any substantive amendment without the filing of an RCE.
Most patent practitioners generally prefer filing an RCE due to the time and expense of an appeal, unless they have reached a true impasse with the Examiner. However, RCE filing fees can be significant and RCEs have recently resulted in long delays as well due to the recent change in Examiner incentives that discourages them from acting on RCEs.
To address concerns about rising costs and delays associated with RCE practice, the USPTO has instituted a pilot program to encourage the resolution of issues after final without the need for filing an RCE. The program provides additional time (three hours) for Examiners to review and search after-final amendments without RCEs and for interviews to discuss the results of the review.
To participate in the program, applicants should submit a request to participate in the AFCP using the USPTO form SB/434, along with a response and amendment as normal (the amendment may not broaden the scope of the claim in any way). The Examiner will make an independent determination as to whether the amendment can be reviewed in the time provided. If so, the Examiner will fully consider the amendment, and either send a notice of allowance or contact the applicant to arrange an interview to discuss the results of the search and why the application cannot be allowed.
If the application is not allowed, after the interview the Examiner will send an advisory action as normal. The applicant will then be back in the position of deciding between an RCE and a notice of appeal, without receiving any additional time. However, the Applicant will have the advantage of having the previous amendment already entered, searched, and discussed. This should lead to more progress towards allowance in a shorter period of time.
Under the AFCP, substantial amendments requiring significant search time will not be considered. However, after-final amendments are frequently fairly minor, and therefore the program could often be useful. The main downside comes from timing issues. Filing the request for after-final consideration and amendment does not give the applicant any additional time to file an RCE or notice of appeal, in the event that the amendment does not result in allowance.
That means that the Applicant will have to act very early after receiving the final Office Action to avoid costly extensions or even abandonment. An applicant filing the request at the three-month deadline might not hear back from the Examiner until two months later, necessitating a three-month extension along with the RCE or Notice of Appeal. A three-month extension is about the same cost as an RCE, so if the Applicant is not able to submit the request early it often makes more sense just to proceed with an RCE. On the other hand, for applicant and practitioners able to respond very quickly and likely avoid the need for extensions even if a notice of allowance is not received, the program may be useful.
The current version of this program runs through September 30, 2013. It is unclear what will happen after that time, but the USPTO will most likely consider the results of the program and either tweak it and run it again, or make it permanent. For applicants and patent practitioners, it is important to keep this program in mind while it is active.