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USPTO Takes Steps to Incentivize Examiners to Consider Amendments After Final

Written by AnneQ on . Posted in News

by Kent R. Erickson

In an effort to reduce protracted examination of patent applications, the USPTO will be implementing a pilot program referred to as After Final Compact Prosecution (“AFCP”). We are optimistic that this pilot program will be effective in increasing the number of cases which will be allowed based upon an amendment after final without having to incur the additional expense of filing a request for continued examination.

AFCP authorizes a limited amount of non-production time for examiners to consider responses filed after a final rejection. An examiner’s performance is evaluated based upon a count system with the examiner receiving counts for each action they take which moves applications towards resolution. Examiner’s do not have to consider any amendments filed after a final rejection if the amendments do not place the claims in condition for allowance or in better form for appeal. In addition, examiners do not have to consider the merits of any amendment after final if it raises new issues or would require further searching by the examiner. Under current practice, examiners are not inclined to consider new arguments or amendments raised in amendments after final, no matter how wonderful we practitioners think the new amendment might be, as doing so does not add to the examiners count total.

Under the pilot program, for utility, plant and reissue applications, an Examiner will get credit for up to three hours for considering the merits of an amendment after final in order to determine whether the amendment and response places the application in condition for allowance. For design applications, one hour of “non-production” time will be allowed. The non-production time credit will offset the number of counts the examiner is otherwise required to obtain and therefore there is an incentive for the examiner to spend some time considering amendments after final that may require additional searching or consideration of the amended claims.

The credit will generally apply to those situations in which additional searching or consideration of the amendments would be required and not cases in which the applicant is simply rewriting objected-to claims in independent form or complying with formal requirements in response to an objection from the examiner. The “non-production” time allowance will include up to one hour for an interview. The USPTO press release, announcing the pilot program indicates that “examiners will be encouraged to use their professional judgment to decide whether a response can be fully considered, including any additional search required, within the time limit in order to determine whether the application is in condition for allowance.” The pilot program is scheduled for the 3rd quarter of Fiscal Year 2012 which runs from April 1 through June 30, 2012. The goal of the pilot program is to see if authorizing the non-production time will increase the number of applications that are allowed at that point in prosecution and reduce the number of Requests for Continued Examination (RCEs).

Our practice has been to file RCE’s with most amendments after a final rejection due to the difficulty in getting examiners to consider such amendments without an RCE. In addition, examiners were disinclined to agree to interview a case on final rejection requiring the filing of an RCE to get an interview which could help reach an agreement on amendments which would place the claims in condition for allowance. We are optimistic that this pilot program will incentivize examiners to now consider such amendments without having to file an RCE and result in more interviews being allowed after final rejections resulting in savings to our clients and earlier issuance of their patents.

The USPTO press release may be accessed at: http://www.uspto.gov/news/pr/2012/12-23.jsp