IP Update, Vol. 11, No. 2

Editors: Marc S. Weiner, Esq. and Nicholas P. Godici

After Final Consideration Pilot Program 2.0

The USPTO has modified the After Final Consideration Pilot Program (AFCP) to create (AFCP 2.0). The goal is to reduce the number of RCEs filed and increase collaboration between the applicant and the examiner. To participate, the application must contain an outstanding final rejection and be an original filed utility, plant, design, international or continuing application. Reissue or reexamination applications are not eligible. The pilot runs from May 19, 2013 until September 30, 2013 and may be further extended.

Requirements: 1) Transmittal form PTO/SB/434; 2) a response after final rejection including a non-broadening amendment to at least one independent claim; 3) a statement that the applicant is willing to participate in an interview with the examiner; and 4) any necessary fees (i.e. Extension of Time fees). All papers must be filed via EFS-web.

If the examiner determines the application is in condition for allowance, a notice of allowance will be issued. If not, then the examiner will contact the applicant for an interview within 10 calendar days.

Please see the Federal Register notice for more information.

Summary provided by Cynthia Leonard.

Statements in Transitional Applications

Please be reminded that as of March 16, 2013, the applicant/ BSKB is required to provide a statement to the USPTO if the application ever included a claim to an invention having an effective filing date on or after March 16, 2013, in a transitional application. A transitional application is a U.S. nonprovisional application that was filed on or after March 16, 2013 (the “transition date”) with a priority/benefit claim before March 16, 2013. The Statement should not be required in a national phase, continuation, or divisional application, since all claims would be supported in the pre-AIA application.

The applicant must provide the Statement within the later of (1) 4 months from the filing date of the nonprovisional application; (2) 4 months from date of entry of the national stage (if applicable); (3) 16 months from filing date of prior-filed application (e.g., a foreign application or U.S. provisional); or (4) the date that a first claim to a claimed invention that has effective filing date on or after March 16, 2013 (e.g., when filing an Amendment that adds “new matter” to at least one claim). The Statement can easily be made in the Application Data Sheet when filing the new application.

No statement is required for a pre-AIA application, which is an application filed before March 16, 2013, with a priority/benefit claim before March 16, 2013.

Also, no statement is required for an AIA application, which is an application filed after March 16, 2013, with a priority/benefit claim after March 16, 2013.

See 37 CFR §§ 1.55(j), 1.78(a)(6), or 1.78(c)(6).

Summary provided by Marc S. Weiner and Eugene T. Perez.