Tuesday, April 3, 2012

USPTO Announces Pilot for Responses After Final Rejection

The United States Patent & Trademark Office (USPTO) announced a new test program for handling applicant response filed after a final rejection. Under current law, an applicant does not have the right to amend a patent application, including the claims, after a final rejection. Under current practice, an amendment submitted after final rejection will not be entered unless the Examiner determines that the amendment puts all claims in condition for allowance or places the claims in better condition for appeal. Despite the fact that an amendment after final could be entered, the fact is that almost all such amendments are not entered with the most common reason being that the amendment cannot be examined without further searching. For that reason, an applicant wanting to amend an application in order to obtain allowance from the Examiner without the delay and expense of an appeal must file a Request for Continued Examination (RCE).



Under the proposed After Final Consideration Pilot (AFCP), an Examiner would be allowed additional time for examining an amendment after final rejection, including additional searching. The proposal would give examiners an additional 3 hours for utility applications and 1 hour for design applications. While the program appears to address a significant problem in the examination process, it is not clear that it will have any effect as there is no requirement that an Examiner avail himself of the additional time. Rather, the decision whether to examine an amendment after final is left to the sole judgment of the Examiner. Moreover, the AFCP does not appear to provide any incentive for examiners to avail themselves of the additional alloted time.

“Compact prosecution is one of our top goals,” said USPTO Director, David Kappos. “The AFCP pilot will allow some additional flexibility for applicants and examiners to work together in after final situations to move applications toward allowance.”

Hopefully, the examiner's corp will largely decide to take advantage of this program to accelerate prosecution and reduce the number of RCE filings. Bringing an application to a quicker final resolution may be sufficient incentive to use the extra time in at least some cases. The AFCP is scheduled to run during the third quarter of FY 2012.

Click here to view the USPTO press release.

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