The U.S. Patent and Trademark Office (USPTO) has extended its After Final Consideration Pilot 2.0 and Quick Path Information Disclosure Statement programs through September 30, 2016. The programs are part of the USPTO’s on-going efforts toward compact prosecution and reduced pendency.

After Final Consideration Pilot 2.0 (AFCP 2.0)

Purpose

• Authorizes additional time for Examiners to search and/or consider Applicant responses after a final rejection.

Requirements

• Application must have an outstanding final rejection.

• File a response to the final rejection that includes:

  ◊ A request for AFCP 2.0 consideration (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.”

• Applicant agrees to participate in any interview requested by the Examiner.

• Must be filed by the USPTO’s electronic filing system.

  Advantages

• No additional fee is required to participate in the program.

• Recommended for applications Applicant believes will be allowed after filing a response to a final rejection with only limited further searching and/or consideration by the Examiner.

• Examiners will also use the additional time to schedule and conduct an interview to discuss the results of the search and/or consideration if the response does not place the application in condition for allowance, so that Applicant benefits from the additional search and/or consideration even if the results do not lead to allowance.

• The option to request an Examiner interview is available regardless of whether a response is considered under AFCP 2.0.

• Available for utility, plant, design and U.S. national stage applications. Disadvantages

• Not available for reissue applications or reexamination proceedings.

• The Examiner may determine that the response cannot be considered under AFCP 2.0 if, for example, additional searching and/or consideration is required that cannot be completed within the time allotted under AFCP 2.0.

• Any supplemental response filed, for example, after an Examiner interview, could be considered Applicant delay that is counted against a patent term adjustment to which the application may be entitled.

Quick Path Information Disclosure Statement (QPIDS)

Purpose

• Eliminates the requirement for processing a Request for Continued Examination (RCE) to obtain consideration of an Information Disclosure Statement (IDS) filed after payment of the issue fee.

• If no item of information in the IDS necessitates reopening examination, the USPTO will issue a corrected notice of allowability.

  Requirements

• Application must be allowed and the issue fee paid.

• File:

  ◊ A request for QPIDS consideration (Form PTO/SB/09), ◊ An IDS that includes:

  » An IDS fee, and
  » A statement that:

  • □  Each item of information in the IDS was first cited in a
    communication from a foreign patent office in a counterpart foreign application not more than 3 months prior to filing the IDS (37 C.F.R. § 1.97(e)(1)), or

  • □  No item of information in the IDS was cited in a communication
    from a foreign patent office in a counterpart foreign application and was known to any individual designated in 37 C.F.R. § 1.56(c) more than 3 months prior to filing the IDS (37 C.F.R. § 1.97(e)(2)),

    ◊ A petition to withdraw the application from issue and petition fee,
    ◊ An RCE and RCE fee, and
    ◊ An authorization to charge a USPTO deposit account for all required fees.

• Must be filed by the USPTO’s electronic filing system. Advantages

• No additional fee is required to participate in the program.

• If no item in the IDS necessitates reopening prosecution, the RCE will not be processed and the RCE fee will be refunded.

• However, if any item in the IDS necessitates reopening prosecution, the RCE will be processed and the IDS fee will be refunded.

• Available for utility, U.S. national stage and reissue applications.

• Multiple QPIDS requests can be filed for the same application.

Disadvantages

• Not available for plant and design applications or reexamination proceedings.

• Inclusion of an amendment is not allowed.

  Considerations for Patent Term Adjustment

• If no item in the IDS necessitates reopening prosecution, the submission of the IDS will be considered Applicant delay that is counted against a patent term adjustment (PTA) to which the application may be entitled.
◊ If possible, include a statement under 37 C.F.R. § 1.704(d) to avoid this reduction:

» Each item of information in the IDS:

• Was first cited in any communication from a patent office in a counterpart foreign or international application or from the USPTO, and this communication was not received by any individual designated in 37 C.F.R. § 1.56(c) more than 30 days prior to filing the IDS, or

• Is a communication that was issued by a patent office in a counterpart foreign or international application or by the USPTO, and this communication was not received by any individual designated in 37 C.F.R. § 1.56(c) more than 30 days prior to filing the IDS.

• If any item in the IDS necessitates reopening prosecution, the submission of the RCE could be counted against a PTA that may be accruing under 35 U.S.C. § 154(b)(1)(B) for an application that is pending for more than 3 years.