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###### Department of Commerce

###### Patent and Trademark Office

          - [Docket No.: PTO-P-2024-0051]

# AGENCY:

United States Patent and Trademark Office, Department of Commerce.

# ACTION:

Notice.

# SUMMARY:

On April 3, 2024, the United States Patent and Trademark Office (USPTO), when setting and adjusting patent fees for fiscal year 2025, proposed a new fee to recuperate costs affiliated with the submission of a request for consideration under the After Final Consideration Pilot Program 2.0 (AFCP 2.0). Commenters on the proposal expressed concerns about the AFCP 2.0 and the proposed fee. In view of these comments, the USPTO has decided to allow AFCP 2.0 to expire. While the program currently runs through September 30, 2024, to accommodate those who may be in the process of preparing to use the program, the USPTO will provide a short extension of the expiration of the program. The USPTO is setting December 14, 2024, as the last day to submit a request for participation under the program.

# DATES:

The USPTO will not accept requests for consideration under the AFCP 2.0 filed after December 14, 2024.

# FOR FURTHER INFORMATION CONTACT:

Kery Fries, Senior Legal Advisor, at 571-272-7757; or Raul Tamayo, Senior Legal Advisor, at 571-272-7728, both with the Office of Patent Legal Administration, Office of the Deputy Commissioner for Patents.

# SUPPLEMENTARY INFORMATION:

On May 19, 2013, the USPTO modified the After Final Consideration Pilot Program (AFCP) to create the AFCP 2.0. The three main differences between the AFCP and the AFCP 2.0 are: (1) an applicant must request to participate in AFCP 2.0; (2) a response to an after final rejection under AFCP 2.0 must include a non-broadening amendment to at least one independent claim; and (3) the examiner will schedule an interview with the applicant if the after-final response did not result in a determination by the examiner that all pending claims in the application were in condition for allowance.

                    The goal of the AFCP 2.0 was to improve pendency by reducing the number of Requests for Continued Examination (RCE) and encourage increased collaboration between the applicant and the examiner to effectively advance prosecution of the application. The AFCP 2.0 does not require any additional fees for an applicant to request consideration of an amendment after final rejection, but any necessary existing fee,                     *e.g.,*                     the fee for an extension of time, is required. Initially, the pilot program was scheduled to run for approximately one year and was set to end on September 30, 2014. The USPTO notified the public that the AFCP 2.0 may be extended (with or without modifications) depending on feedback from participants and based on a determination of the effectiveness of the pilot program. The USPTO repeatedly extended the pilot program, with the most recent extension set to end on September 30, 2024.                

                    Since 2016, applicants have filed more than 60,000 AFCP 2.0 requests annually. Due to the high usage of the AFCP 2.0, costs to administer the program are significant. A large part of the AFCP 2.0's high usage is due to economic inefficiencies where participants receive program benefits without paying for the cost of the                           ( print page 79900)                        service directly. For fiscal year 2022, the USPTO estimates it expended more than $15 million in incurred costs associated with examiners considering the merits of AFCP 2.0 submissions. This cost is in addition to the time spent by examiners to initially evaluate the AFCP 2.0 request for program compliance, interview time, and any additional consultation with supervisors and primary examiners.                

On April 3, 2024, the USPTO proposed a new fee for participation in the AFCP 2.0 when setting and adjusting patent fees for fiscal year 2025 (See Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 FR 23226). The agency proposed to charge fees for filing a request for consideration under the AFCP 2.0 as follows: $500 for requests filed by undiscounted entities; $200 for requests filed by entities entitled to the small entity discount; and $100 for requests filed by entities entitled to the micro entity discount. The proposed fee would have offset the USPTO's costs of administering the AFCP 2.0. The USPTO stated that if there is sufficient public support for the proposed fees, the USPTO would favor continuing the pilot program. However, the USPTO explained that if it was unable to recover the costs of the AFCP 2.0 from participants, the USPTO would consider terminating the program.

In response to the proposed new fee for participation in the AFCP 2.0, commenters expressed concerns about the program and the fee. Because the public is not widely receptive to paying a fee to participate in the AFCP 2.0, the USPTO has decided to terminate the program after a brief extension to December 14, 2024. Accordingly, the USPTO will not consider any request for consideration under the AFCP 2.0 filed after December 14, 2024.

                    The USPTO is providing the extension of the AFCP 2.0 until December 14, 2024, to provide program users with reasonable time to adjust to the program's upcoming termination should they be in the process of preparing a request for consideration under AFCP 2.0. Applicants still have various options available for after final consideration. For example, under routine examination practice, after the close of prosecution, proposed amendments that will place the application either (1) in condition for allowance or (2) in better form for appeal, may be entered. See 37 CFR 1.116(b). Additionally, an examiner may have an interview with the applicant to advance prosecution. See sections 713.09 and 714.12 of the Manual of Patent Examining Procedure (9th ed., Rev. 07.2022, February 2023) (MPEP), which may be viewed on, or downloaded from the USPTO website at                     *mpep.uspto.gov*                     or                     *www.uspto.gov/​MPEP.*                     Moreover, applicants still have the option to file a pre-appeal brief request for review at the time of the filing of a notice of appeal, which provides applicants with the opportunity to have a panel decide if an issue for appeal is, in fact, present in the record. See section 1204.02 of the MPEP.                

Katherine K. Vidal,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

[FR Doc. 2024-22481 Filed 9-30-24; 8:45 am]

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