In the beginning of October, the U.S. Patent and Trademark Office (USPTO) announced that it is extending two programs that patent applicants find useful in the later stages of prosecution—the After Final Consideration Pilot 2.0 (AFCP) and the Quick Path Information Disclosure Statement (QPIDS) programs.
The AFCP program originated in March 2012, and provides examiners with additional time to consider applicant responses after a final rejection. Examiners are allotted three (3) hours of additional time to interview and discuss their thinking with applicants even if a response does not place an application in condition for allowance. Applicants and practitioners can use this program to have amendments considered, and perhaps allowed, without the need to file a Request for Continued Examination (RCE). To do so, applicants must submit a response under 37 C.F.R. § 1.116 that includes a non-broadening amendment to at least one independent claim, along with a request under the pilot program.
The QPIDS program also originated in 2012 (May), and is intended to reduce application pendency and applicant costs when it becomes necessary to submit an Information Disclosure Statement (IDS) after the issue fee is paid for a patent application. Under the program, an IDS can be filed after issue fee payment with a “conditional” RCE, which includes both an RCE and the $1200 or $1700 RCE fee required by 37 C.F.R § 1.17(e). Applicants must also submit a petition to withdraw from issue, the $140 petition fee required by 37 C.F.R. § 1.17(h), the $180 IDS fee required by 37 C.F.R. § 1.17(p), and one of the timeliness statements set out in 37 C.F.R. § 1.97(e). The statements set forth in 37 C.F.R. § 1.97(e) require the applicant to certify that: (1) each item of information contained in the IDS was first cited in any communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the IDS; or (2) no item of information contained in the IDS was cited in a communication from a foreign patent office in a counterpart foreign application, and, to the knowledge of the person signing the certification after making reasonable inquiry, no item of information contained in the IDS was known to any individual designated in 37 C.F.R. § 1.56(c) more than three months prior to the filing of the IDS. Many practitioners are reluctant to make the second, (e)(2), certification because of the potentially large group of people it encompasses and the potentially lengthy amount of time it encompasses (potentially the entire professional career of any person in that potentially large group).
An IDS that complies with the QPIDS program requirements will be considered by the examiner, who will then decide whether prosecution needs to be reopened based on any item cited in the IDS. If the examiner decides not to reopen prosecution, the application will be passed to issue without processing the conditional RCE, and the RCE fee will be remitted back to the applicant. If prosecution is reopened, the conditional RCE will be processed and the IDS fee will be remitted back to the applicant. In many cases, the QPIDS program has allowed applicants to have an IDS considered after issue fee payment without the expense and delay associated with filing an RCE. Unfortunately, this program remains unavailable to applicants who are made aware of new references by virtue of a USPTO Office Action unless the applicant is willing to make a certification under 37 C.F.R. § 1.17(e)(2) since the 37 C.F.R. § 1.17(e)(1) certification only relates to communications from foreign patent offices in counterpart foreign applications.
Useful links for both programs are provided below.
After Final Consideration Pilot 2.0 (AFCP) Program Links
Quick Path Information Disclosure Statement (QPIDS) Program Links
John (Jack) J. Penny, V is the chair of Nutter's Intellectual Property Department. He counsels clients in the development of strategic patent portfolios; prepares opinions concerning infringement, validity ...
Rory P. Pheiffer is a partner in Nutter’s Intellectual Property Department and a member of both the Emerging Companies and Life Sciences and Medical Devices practice groups. His practice covers a broad spectrum of intellectual ...
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