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When Final is Not So Final: Strategies for Overcoming Final Rejections

Emily Miao, Ph.D.Spring 2017 (snippets)

Typically, during prosecution of a U.S. application, a second or subsequent Office Action could be made final by the patent examiner at which time prosecution of the application is essentially closed. For an applicant who wishes to advance their applications but avoid the costs and delays of appealing final rejections, there are a number of options that the applicant could consider. For instance, final rejections could be addressed by filing an after final response under 37 CFR 1.116 which, in some cases, may lead to an allowance, depending on the type of claim amendments and arguments made. Such responses do not require any fees and can be effective when straightforward arguments or amendments are presented to overcome the rejections or when the remaining issues are simple to address. If the after final response is unsuccessful in resolving the remaining issues because the arguments are unpersuasive or raise new issues that require further consideration, the examiner will issue an Advisory Action. At this point, the applicant can either appeal or file a Request for Continued Examination (RCE) to reopen prosecution, which allows the examiner additional time to consider the amendments and arguments made in the after final response. However, both Appeals and RCEs can be expensive and can result in further delays in the prosecution of the application.[1]

In part because of RCE and Appeal backlogs, the USPTO has introduced several post-examination programs to speed-up patent prosecution, increase collaboration between examiners and applicants, and reduce the number of RCE and Appeal filings. In this paper, we discuss several procedural options available to applicants after receiving a final rejection, advantages/disadvantages of each option, and conclude with suggestions on how to select the best option depending on the situation.

Pre-Appeal Brief Conference (Pre-Appeal) Program

After receiving a final rejection, or following an Advisory Action if an after final response was filed, the applicant can file a Notice of Appeal to initiate the appeal process. Because the appeal process could be a time-consuming and expensive endeavor, one optional step in the appeal process is filing a Pre-Appeal Brief Request for Review with the Notice of Appeal. Under the program which launched nearly 10 years ago, no USPTO fees are involved in filing a Pre-Appeal request but a five-page Pre-Appeal brief which summarizes the issues is required. Under the Pre-Appeal program, before a formal appeal brief is filed, the legal and factual basis of the rejections is formally reviewed by a panel of three examiners, including the examiner of record and her supervisory patent examiner. The panel could decide to either send the application back to the examiner for further prosecution, allow the application to continue in the appeal process, or pass the application to allowance. While some applications are allowed under the Pre-Appeal process, a majority of the applications are either sent back to the examiner to reopen prosecution or continue with the appeal process. Based on statistics calculated by Juristat, only 18% of all appeals (filed with or without the Pre-Appeal request) between 2006 and January 2017 have resulted in a favorable decision for the applicant (i.e., allowance or reopening of prosecution).[2] And only 14% of all appeals filed with a Pre-Appeal request have resulted in allowance (either in the Pre-Appeal conference or in a subsequent Office Action if prosecution was reopened).[3] Furthermore, as there is no interaction between the applicant and the panel during the Pre-Appeal review process, applicants generally do not learn the basis of the decision or what was discussed during the process.

The Pre-Appeal program can be useful in having a rejection reconsidered before proceeding with the appeal process, including the actual preparation and filing of a costly appeal brief. The cost of preparing a Pre-Appeal brief is significantly lower than an appeal brief and panel turnaround time is significantly faster. A regular appeal can take as long as 26 months to be decided.[4] However, the Pre-Appeal program is intended to be used when the applicant believes that there is a clear legal or factual deficiency in the rejections, such as novelty rejections where there is a missing element in the cited art. The Pre-Appeal program may be less useful in attacking obviousness rejections where arguments are based on reasons as to why the cited art references cannot be combined. Because of the make-up of the panel, some applicants believe that the likelihood of having rejections reconsidered is slim and that it may be better to file a full appeal brief that can be reviewed by an independent panel of judges at the PTAB.

After Final Consideration Pilot Program (AFCP 2.0)

The USPTO launched an internal pilot program entitled the After Final Consideration Pilot (AFCP) nearly 5 years ago to address the ever increasing RCE backlog.[5] However, the backlog continued to grow, and in 2013 the USPTO launched a revised version of AFCP (referred to as AFCP 2.0) based on public AFCP feedback.[6] Since its launch, AFCP 2.0 has received mostly positive feedback and has been extended several times. Under the current extension, the program will run until September 30, 2017, but is likely to be renewed again.[7]

One of the advantages of AFCP 2.0 is that it provides examiners with additional time to conduct supplemental searches and/or consider responses after a final rejection and to conduct interviews with applicants. In addition, there are no fees associated with filing a request to participate under the AFCP 2.0 program, nor are there claim number restrictions. However, all papers associated with the AFCP 2.0 must be filed via EFS-WEB and the AFCP 2.0 request must be filed with a response under 37 CFR 1.116.[8] The response must further include a non-broadening amendment of at least one independent claim.[9] The applicant or representative must also agree to be available for a telephone interview with the examiner. If the amendments are straightforward, allowance can be expected in many instances. However, if the amendments are extensive and/or raise new issues that cannot be addressed by the examiner within the time allotted under the program, the applicant can expect to receive an Advisory Action and may need to file an RCE or appeal in order to continue prosecution.[10] Furthermore, if the examiner is unable to respond within three months of the date of the Office Action, the Applicant may need to include extension fees as a result of the examiner’s delay.[11] Even if the end result of the pilot program does not lead to an allowance, the applicant could benefit from the results of any additional search and consideration by the examiner.

The USPTO has not yet published any official statistics on the AFCP 2.0 program. However, earlier reported statistics indicated that 50% of the AFCP requests that were considered by examiners (i.e., the applicant did not receive an Advisory Action) in the period between May 19, 2013, and May 18, 2015 resulted in allowance, which corresponds to 30% of all valid AFCP 2.0 requests filed during that period.[12]

For applicants faced with a final rejection and who believe that a response under Rule 116 may lead to allowance with only limited further searching or consideration by the Examiner, the AFCP 2.0 program provides an opportunity to receive an allowance without resorting immediately to the filing of an RCE, thus potentially shortening pendency and obtaining a cost saving. However, the applicant should file the request as early as possible as an examiner is given 45 days to respond to a request and filing the request with an amendment does not toll the deadline in responding to an outstanding Office Action.[13] In addition, the applicant should also avoid extensive claim amendments as the AFCP 2.0 is most effective when the amendment addresses simple, straightforward patentability issues.

Post-Prosecution Pilot (“P3”) program

The P3 pilot program was formally launched on July 11, 2016, with the aim of increasing collaboration between patent examiners and applicants, reducing the backlog appeals to the Patent Trial and Appeal Board (PTAB), as well as reducing the number of RCEs.[14] The P3 program combined the best features of the Pre-Appeal program and the AFCP program with additional benefits for the applicant. For instance, under the P3 program, an applicant can present oral arguments (a new beneficial feature) in front of a panel of three examiners before a Notice of Appeal is filed.[15] There are no USPTO fees involved to participate in the P3 program, however a P3 transmittal request must be filed via EFS-Web within two months of the mailing date of the final Office Action and be accompanied by a response of no more than five pages of arguments (a Pre-Appeal feature) and a statement that the applicant is willing and available to participate in a required 20 minute conference with the panel.[16] The applicant has the option of including a non-broadening amendment of an independent claim (an AFCP feature).[17] After the applicant’s presentation, the panel will confer on the merits of the case and make a decision as to patentability. Unlike the Pre-Appeal program, which requires the filing of a Notice of Appeal and fee payment, the filing of a Notice of Appeal under the P3 program will terminate the P3 request.[18] Filing of the P3 request will not toll the deadline of the Office Action and depending on how long it takes the panel to reach its decision, extension fees for filing a Notice of Appeal or an RCE may be needed.[19]

The P3 program is ideal for applicants interested in having a formal review of the pending rejections by a panel of examiners as well as an opportunity to present oral arguments in support of their position. The incorporation of the oral presentation into the P3 process is one of the main advantages of the program, allowing applicants to formally present oral arguments before a panel and possibly avoid a costly appeal. However, the P3 program was terminated in January 12, 2017, after a six month period, and the USPTO did not extend the pilot program. Based on the USPTO’s statistics, the RCE backlog had decreased by 9% during the six month P3 pilot program.[20] In addition, 995 decisions were rendered as of December 8, 2016 in which 601 had the final rejection maintained (60.4%), 184 had prosecution reopened (18.5%), and 210 were allowed (21.1%).[21] The USPTO is currently analyzing the results of internal and external surveys and the statistical data and will decide on whether or not to renew the P3 pilot program.

Conclusion

In summary, both the Pre-Appeal and the AFCP programs can be helpful to applicants in possibly avoiding filing RCEs or marching into a full appeal. Even if these programs do not provide the desired result, there are still benefits. For applicants faced with defective novelty rejections, the Pre-Appeal program may be helpful. However, even with obviousness rejections, it is possible that prosecution may be reopened at the panel’s discretion. The AFCP program may be more appropriate where straightforward, non-broadening claim amendments that do not raise new issues are used. Even if an applicant receives an Advisory Action, the applicant could have the benefit of any additional examiner search and consideration before deciding to file an RCE or Notice of Appeal.



[1] In particular, the fees alone for Appeal could exceed $3,000, and the average pendency from filing an application to a Board Decision in an Appeal is 77.7 months. The filing fees alone for the first RCE and for the second and subsequent RCEs are $1,200 and $1700 respectively, with a further subsequent delay of several months before the new office action issues. See USPTO Fee Schedule, https://www.uspto.gov/learning-and-resources/fees-and-payment/
uspto-fee-schedule
; see also Data Visualization Center, https://www.uspto.gov/dashboards/patents/main.dashxml.

[2] See James Cosgrove & Katrina Brundage, A Pre-Appeal Brief Conference is a Winning Strategy, Even if it Probably Won’t Lead to Allowance, http://www.ipwatchdog.com/2017/01/12/
pre-appeal-brief-conference-winning-strategy/id=76897/
.

[3] Id.

[5] See USPTO Extends After Final Consideration Pilot to Sept. 30, 2012 (June 20, 2012), https://www.uspto.gov/about-us/news-updates/
uspto-extends-after-final-consideration-pilot-sept-30-2012

[6] See 78 Fed. Reg. 29,117-19, available at https://www.gpo.gov/fdsys/pkg/FR-2013-05-17/pdf/2013-11870.pdf

[8] See Guidelines for Consideration of Responses After Final Rejection, available at https://www.uspto.gov/sites/default/files/
patents/init_events/afcp_guidelines.pdf

[9] 37 C.F.R. § 1.116(b)

[10] See Frequently Asked Questions – AFCP 2.0 Pilot Program, available at https://www.uspto.gov/sites/default/files/afcp%202-0%20faq.pdf

[11] See Guidelines for Consideration of Responses After Final Rejection, available at https://www.uspto.gov/sites/default/files/patents/
init_events/afcp_guidelines.pdf

[12] See Kate Gaudry, The After Final Consideration Program: Allowance Prospects,

https://www.law360.com/articles/665854/
the-after-final-consideration-program-allowance-prospects

[13] See Frequently Asked Questions – AFCP 2.0 Pilot Program, available at https://www.uspto.gov/sites/default/
files/afcp%202-0%20faq.pdf

[14] See 81 Fed. Reg. 44,845-49, available at https://www.gpo.gov/fdsys/pkg/
FR-2016-07-11/pdf/2016-16423.pdf

[15] Id.

[16] Id.

[17] Id.

[18] Id.

[19] Id.

[20] See Aborn C. Chao, The Post-Prosecution Pilot (P3) Program – Worth Reactivating?, available at

http://www.natlawreview.com/article/
post-prosecution-pilot-p3-program-worth-reactivating
; see also RCE Backlog, https://www.uspto.gov/corda/dashboards/
patents/kpis/kpiBacklogRCEDrilldown.kpixml

 

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