USPTO Announced Termination of its After Final Consideration Pilot Program 2.0

Citing millions of dollars in administrative costs and lack of offsetting revenue as driving factors, the United States Patent and Trademark Office (USPTO) announced on October 1, 2024, that it is terminating its After Final Consideration Pilot Program 2.0 (AFCP 2.0) effective December 14, 2024. An earlier proposal contemplated instituting a new government fee for an AFCP 2.0 request that would vary depending on the entity size status. After receiving public feedback, the USPTO decided to instead terminate the program. Applicants wishing to avail themselves of the AFCP 2.0 program must therefore do so on or before the December 14, 2024 deadline.

AFCP 2.0 began in 2013 and provides a government fee-free option for applicants to file a response to a final office action that includes a non-broadening amendment to at least one independent claim. AFCP 2.0 allots extra patent examiner time for search and examination compared to the time allotted for review of a standard after-Final response. Perhaps as importantly, AFCP 2.0 also mandates an examiner-initiated interview if all pending claims are determined not to be in condition for allowance, giving the applicant one last chance to find common ground with the examiner.

After December 14, standard after-final amendment and response procedures remain available to applicants receiving a final rejection. Unlike AFCP 2.0, entry of amendments and granting of interviews after a final rejection are entirely at the examiner’s discretion, and only minor amendments/cancellation of claims are likely to be accepted. Applicants considering filing an after-final response must consider whether the claims of the application are in proper condition for an after-final response, and present the most compelling case possible that proposed after-final amendments place the application in better form for allowance or appeal. An after-final response may also be appropriate to remove certain rejections and streamline the number of issues to be considered on appeal. Procedurally, applicants must be mindful of filing after-final responses no later than two months after the mailing date of a final rejection in order to maximize the likelihood that they can respond to an examiner-issued Advisory Action denying entry of the amendments without requiring extensions of time and fees.

Another option available to applicants after receiving a final rejection is the USPTO’s Pre-Appeal Brief Review Request and Conference Pilot Program. The program provides for review of the application by a panel of patent examiners including the supervisory patent examiner, the examiner of record, and at least one additional examiner or quality assurance specialist. This program can be helpful in advancing cases where the examiner’s position is clearly erroneous. A timely Notice of Appeal and fee and an abbreviated (up to five pages) brief are required to begin the Pre-Appeal Brief Request for Review. If the Request for Review is successful, the panel will reverse the rejection(s) and either a Notice of Allowance or a new Office Action will follow.

If the panel determines that at least one issue is ripe for appeal, the applicant wishing to continue prosecuting the application has the final option of timely filing a full Appeal Brief, or alternatively filing a Request for Continued Examination and accompanying sizable fee to terminate the Appeal and resume prosecution of the application by the original examiner.

After December 14, resolving all issues standing between the applicant and allowance of claims before receiving a final office action will be crucial to avoid after-final procedures. Scheduling telephonic or in-person examiner interviews after receiving a non-final office action should be routinely considered to attempt to establish a good working relationship with the examiner and resolve any pending issues before filing a formal response.

If you have questions about best practices in patent prosecution following termination of AFCP 2.0, contact a Stites & Harbison IP attorney for guidance.