After-Final Consideration and Upstop Pilot Programs

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NEWSLETTER ARCHIVE

Volume 52, Issue 2

After-Final Consideration and Pilot Programs

By Mandy J. Song, Ph.D. ¹ and Gavin G. Ye, Ph.D. ²

Bayes PLLC

I. INTRODUCTION

After a final office action is issued in a U.S. patent application, the prosecution is considered “closed.” To further prosecution, applicant has a very limited opportunity to request reconsideration or make amendments in order to place the application in condition for allowance. Alternatively, applicant has to either appeal the final rejection or take additional actions, usually with fees, to “reopen” prosecution.

In recent years, to optimize the workflow after final rejections, the United States Patent and Trademark Office (USPTO) has greatly expanded the after-final opportunities for patent applicants as part of the Enhanced Patent Quality Initiative. As a result, there are now more options to resolve disputes far faster and more cost-effectively, beyond the conventional vehicles that are still available. For example, the USPTO launched a new Fast-Track Appeals Pilot program in July 2020, and also extended after-final programs such as the After-Final Consideration Pilot 2.0 program. Other USPTO programs encourage direct collaboration between applicants and examiners to increase efficiencies in patent prosecution.

Given the array of after-final options now available, practitioners who understand the unique benefits and tactical implications of each option can select the best after-final course for each application. This article summarizes the available options, considerations for selecting the right option, and some of the most effective pilot programs currently offered by the USPTO.

II. AFTER-FINAL OPTIONS AND CONSIDERATIONS

As a preliminary note, while “second or any subsequent actions on the merits shall be final,” a final rejection is not proper “where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement.”³ Therefore, when a final office action is received, do not assume it is proper and rush to consider after-final options. Instead, check carefully if any new ground of rejection is added that is not necessitated by amendment or an information disclosure statement (IDS). For example, if the final office action newly includes a section 101 rejection of a claim not amended, finality is premature and improper. While finality is not a ground for appeal, applicant can request the examiner to withdraw the final rejection.⁴

For a properly made final rejection, applicant’s options to respond can include:

(1) Request for Reconsideration under 37 C.F.R. §1.116
(2) Amendment after Final under 37 C.F.R. §1.116
(3) Amendment after Final under the After Final Consideration Pilot 2.0 (AFCP 2.0) program⁵
(4) Amendment with a Request for Continued Examination (RCE) under 37 C.F.R. §1.114
(5) Request for a pre-appeal brief conference under the Pre-Appeal Brief Conference Pilot Program⁶
(6) Appeal under 37 C.F.R. §41.31, possibly under the Fast-Track Appeals Pilot Program⁷

To make the right choice among these options, a key decision to make is whether applicant would like to make further amendments. The decision whether to amend is largely dictated by the strength of the pending claims in light of the final rejection as well as the protection scope applicant would like to pursue. For example, if the prior art of record is close and applicant is willing to budge on the claim scope, making further amendment may be the best way to advance prosecution. On the other hand, if the prior art can be distinguished or it is crucial for the applicant to obtain the claim scope as is, no amendment will be necessary. Based on the decision whether to amend, the after-final options generally split into two groups, as shown in the figure below.

The final office action typically gives applicant three months from the mailing date of the action to response, which is known as the shortened statutory period. Although extensions are available with requisite fees, in any event, the response period cannot be extended beyond 6 months after the action mailing date, which is known as the statutory period. Among the options that allow amendments, it is important to note that filing an Amendment after Final or an AFCP 2.0 request does not stop the running of the shortened statutory period or the statutory period. The response period is tolled only if the USPTO agrees to enter the amendment and issues a notice of allowance or the applicant files an RCE.

A major difference among the three options is the extent of amendments that can be made. In an Amendment after Final under 37 C.F.R. §1.116, amendments are limited to “canceling claims or complying with any requirement of form expressly set forth in a previous office action,” “presenting rejected claims in better form for consideration on appeal,” or with “showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.”⁸ Otherwise, the examiner will decline to enter or consider the amendment and issue an advisory action. According to PTO statistics for after final responses, the vast majority receive an advisory action, while others may receive a notice of allowance or a non-final rejection.⁹ In comparison, if filed with AFCP 2.0, the Amendment after Final may potentially present more substantive amendments than those discussed above, as long as the amendment “does not broaden the scope in any aspect” and does not require additional search of more than 3 hours.¹⁰ Filing an Amendment with an RCE is the option that enjoys most flexibility in amendments. In an RCE response, applicant could even cancel all pending claims and present an entirely new claim set, as long as the claims have written description support in the originally filed application.

Other differences among the three options include the pendency of decision, PTO fees involved and attorney fees, as summarized in the table below:

The three options available when applicant does not wish to make any amendment also differ in their effect on the response period. In particular, pre-appeal brief conference and formal appeal both require the filing of a Notice of Appeal, which can effectively toll the response period. In contrast, like an Amendment after Final, a Request for Reconsideration filed under 37 C.F.R. §1.116 does not stop the clock. Other differences among the three options include the decision maker, the pendency of decision, PTO fees involved and attorney fees, as summarized in the table below:

No one option is absolutely better than others. Each option is valuable for applications with certain characteristics and therefore, after-final response involves many strategic considerations. Among these considerations include the effectiveness to advance prosecution, speed for a resolution, and fees (both attorney fees and PTO fees).

III. USPTO AFTER-FINAL PILOT PROGRAMS As part of the USPTO’s ongoing efforts towards compact prosecution, the office has launched several pilot programs to expedite the after final responses and effectively advance prosecution. Some of these programs aim to increase collaboration between examiners and stakeholders (e.g., AFCP 2.0), some aim to provide a “shortcut” through an otherwise complicated and lengthy process to resolve relatively straightforward issues (e.g., Pre-Appeal Brief Conference), while some others simply provide an opportunity to get reviewed out of turn (e.g., Fast-Track Appeals). Although these programs are “pilot” in nature, they can be extended almost indefinitely if found effective. For example, the Pre-Appeal Brief Conference pilot program started July 2005 but is still “ongoing” after almost 16 years¹⁵ and its rules have made into the MPEP. A. After Final Consideration Pilot 2.0 (AFCP 2.0) Program AFCP 2.0 pilot program became effective on May 19, 2013¹⁶ and has been extended multiple times currently through September 30, 2021.¹⁷ Compared to regular after final response under 37 C.F.R. §1.116, which provides examiners literally no time to consider substantive amendments, AFCP 2.0 authorizes additional time (up to 3 hours for plant and utility applications and up to 1 hour for design applications) for examiners to search and consider responses after final rejection. If the examiner decides the amendment still does not place the application in condition for allowance, AFCP 2.0 also requires examiners to use the additional time to schedule and conduct an interview to discuss the results of their search and consideration with applicants. Therefore, the pilot program gives examiners more incentives for considering after final amendments and provide applicants an opportunity to move their applications to allowance after final rejections without having to file an RCE. Even when the results do not lead to allowance, applicants can benefit from the additional search and consideration afforded by the program. From a practitioner’s perspective, AFCP 2.0 effectively creates a win-win situation for both the examiners and applicants.

To be eligible, applicant needs to file a response under 37 CFR §1.116, which includes a request for consideration under the pilot (Form PTO/SB/434) and an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect.¹⁸ After receiving the AFCP 2.0 request, the USPTO follows the general procedures summarized using the follow chart below:

The USPTO uses a specialized AFCP 2.0 form (PTO-2323) to communicate the status of the AFCP 2.0 submission. If an interview is conducted, the form will also accompany an interview summary.

AFCP 2.0 program has been proven quite successful and thus has been continuously extended. In the authors’ experience, compared to the regular Amendment after Final scenario, examiners are much more willing to consider substantive amendments under the AFCP 2.0 program and willing to issue notice of allowance if the amendments indeed overcome the rejections. The authors also had great successes to gauge examiners’ feedback on amendments (e.g., through the required interview) even if the submission does not result in immediate allowance and use the feedback to further amend the application in the right direction.

B. Pre-Appeal Brief Conference

The Pre-Appeal Brief Conference pilot program, since its creation in July 2005, has been widely used and highly appraised by practitioners. It is particularly useful for tackling “clear legal or factual deficiency in the rejections”¹⁹ without having to go through the costly and lengthy formal appeal process. In general, such deficiency falls into two categories: (1) “clearly improper rejections based upon error(s) in facts”, or (2) “omission or presence of essential elements required to establish a prima facie rejection.”²⁰ Practically, some of the most common examples of arguments that are appropriate for pre-appeal include:

The applied reference is not in fact prior art.
Inventive entity is clearly not one to which reference can be applied.
A claim element that is clearly not present in applied art.
Support in the disclosure is clearly found, contrary to a 112(a) rejection or contrary to the rejection’s assertion otherwise.
No rationale is provided in a 103 rejection.
No evidentiary basis for a 103 rationale is provided in the rejection.

In order to participate in the pilot program, the applicant has to file a notice of appeal and a request for pre-appeal brief review accompanied by arguments in a separate paper.²¹ The request (including the arguments) is limited to five pages. Upon receiving the request, a supervisory examiner will designate a panel of three reviewers to review the appellant’s remarks and the examiner’s rejections.²² After the review, the USPTO will mail a decision on the status of the application, stating one of the following three outcomes: the application remains under appeal because there is at least one actual issue for appeal, prosecution on the merits is reopened and a new office action will follow, or the application is allowed and a notice of allowance will follow.²³

While not many applications are allowed directly as a result of the pre-appeal brief conference, a considerable number see prosecution reopened and current rejections withdrawn. By having the rejections and arguments reviewed by a panel of examiners, the applicant gains a valuable opportunity to bring in some “fresh thoughts” and second opinions to break prosecution impasse with the assigned examiner. If the panel determines that the application remains under appeal, applicant could then decide whether it is ready to take the application to the Board for a formal appeal or instead file an amendment with an RCE to continue prosecution.

C. Fast-Track Appeals Pilot Program

The Fast-Track Appeals Pilot Program was launched on July 2, 2020. Under the pilot program, appellants can have their ex parte appeals advanced out of turn. To be eligible, appellant needs to file a petition under 37 C.F.R. §41.3 and pay a $420 petition fee under 37 C.F.R. §41.20(a).²⁴ If the petition is granted, the Patent Trial and Appeal Board (PTAB) targets to issue a decision within six months from the date the petition is granted and the appeal is entered into the pilot program.²⁵ In fact, according to USPTO’s published data, it takes the office an average of only 1.4 days to decide the petition, and the PTAB an average decision time of about 2.2 months from the date the petition for fast-track review was granted.¹⁶ Compared to the average appeal time for cases (about 13 months as of February 2021), the overall decision time under this pilot program is at least 50% faster.

Despite the diligence of the PTAB, this pilot program has not been as popular as the AFCP 2.0 or Pre-Appeal Brief Conference programs. While the program allows the USPTO to grant as many as 125 petitions per quarter, three quarters since the program started and as of April 2, 2021, there were only 147 total petitions granted, much less than the set limit. This is possibly due to the fact that the decision time (about 13 months) without fast-track review is itself at record low comparing to a decade ago when the pending appeals almost quadrupled. The pilot program could gain more attraction when the pending appeals start to accumulate and decisions start to slow down.

IV. CONCLUSIONS

Multiple options are available for responding to a final office action. Each option offers unique benefits that might suit particular patenting needs. Which option to use is ultimately a strategic decision made based on considerations such as whether further amendment is needed, the balance between broad protection scope and speed to obtain an issued patent, and applicant’s budget on attorney fees and USPTO fees. Several pilot programs currently available could further facilitate compact prosecution after final rejections.

¹Mandy Song is the founding and managing partner of a full-service intellectual property law firm Bayes PLLC. Mandy’s practice includes patent prosecution, client counseling, patent portfolio management & transactions, patent litigation in U.S. federal district courts and Section 337 investigations at the U.S. International Trade Commission (ITC), and post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). Mandy serves clients around the globe and has extensive experience working with clients oversea to address their intellectual property needs in the United States. ²Gavin Ye is a partner of Bayes PLLC. Gavin’s practice includes patent prosecution, patent litigation, patent invalidity proceedings, patent portfolio management, counseling for start-up companies, and intellectual property right enforcement on e-commerce platforms.

³See Manual of Patent Examining Procedure (R-10.2019 last revised June 2020) (hereafter, MPEP) §706.07(a).

4 See MPEP §706.07(d). 5 After Final Consideration Pilot 2.0, https://www.uspto.gov/patents/initiatives/after-final-consideration-pilot-20. 6 See MPEP §1204.02. 7 Fast-track appeals pilot program, https://www.uspto.gov/patents/ptab/fast-track-appeals-pilot-program. 8 37 C.F.R. §1.116(b). 9 See Patents After Final Response Data February 2021, https://www.uspto.gov/dashboard/patents/after-final-response.html (statistics subject to change). 10 See After Final Consideration Pilot 2.0, https://www.uspto.gov/patents/initiatives/after-final-consideration-pilot-20 11 See USPTO fee schedule effective January 2, 2021, https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule (fees subject to change). 12 See Patents Pendency Data February 2021, https://www.uspto.gov/dashboard/patents/pendency.html (statistics subject to change). 13 See USPTO fee schedule effective January 2, 2021, https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule (fees subject to change).

14 See Appeal and interference statistics February 2021, https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/statistics (statistics subject to change). 15 See New Pre-Appeal Brief Conference Pilot Program, https://www.uspto.gov/web/offices/com/sol/og/2005/week28/patbref.htm.

16 79 Fed. Reg. 29117, https://www.uspto.gov/patents/initiatives/after-final-consideration-pilot-20.

17 After Final Consideration Pilot 2.0, https://www.uspto.gov/patents/initiatives/after-final-consideration-pilot-20. 18 Guidelines for Considerations of Responses After Final Rejection under 37 CFR 1.116(b) under the After Final Consideration Pilot 2.0 (AFCP 2.0), https://www.uspto.gov/sites/default/files/patents/init_events/afcp_guidelines.pdf 19 See New Pre-Appeal Brief Conference Pilot Program, https://www.uspto.gov/web/offices/com/sol/og/2005/week28/patbref.htm 20 Id. 21 See MPEP §1204.02.

22 Id.

23 Id. 24 Fast-track appeals pilot program, https://www.uspto.gov/patents/ptab/fast-track-appeals-pilot-program. 25 Id. 26 Id.

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