[Federal Register Volume 89, Number 190 (Tuesday, October 1, 2024)]
[Notices]
[Pages 79899-79900]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-22481]


-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

Patent and Trademark Office

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


Extension and Termination of the After Final Consideration Pilot 
Program 2.0

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

[[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]
BILLING CODE 3510-16-P