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Kenneth Horton Main: (801) 328-3600
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60 East South Temple Cell: (801) 809-0310
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Salt Lake City, UT 84145-0120 http://www.linkedin.com/in/HortonIP
THE IP LEGAL MINUTE
APRIL 2012: AFTER FINAL ADJUSTMENTS
Earlier this month, the PTO implemented the After Final Consideration Pilot (AFCP) program. The details of the
AFCP project can be found at http://www.uspto.gov/patents/init_events/afcp_guidelines.pdf. This program
hopefully will stem the growing problem of lengthy delays after an RCE has been filed. RCEs were traditionally
placed at the front of Examiner’s docket. This placement was changed several years ago when RCEs were
transitioned to the “new work” docket, effectively lengthening consideration of an RCE from several months to
several years. This change was implemented to expedite examiners picking up “new” cases. And while this change
has worked, it has created a backlog of RCE cases.

Under the AFCP, an After Final (AF) Amendment under 37 CFR 1.116(b) will be entered when it may lead to earlier
allowance of the application without undue burden on the Examiner or Applicant. Specifically, an AF Amendment
will be entered when:

1. The amendment places the application in condition for allowance by canceling claims or complying with
formal requirement(s) in response to objection(s) made in the final Office Action.
2. The amendment places the application in condition for allowance by rewriting objected-to claims in
independent form.
3. The amendment places the application in condition for allowance by incorporating limitations from objected-
to claims into independent claims, if the new claim can be determined to be allowable with only a limited
amount of further consideration or search.
4. The amendment can be determined to place the application in condition for allowance with only a limited
amount of further search or consideration, even if new claims are added without cancelling a corresponding
number of finally rejected claims.
5. The amendment can be determined to place the application in condition for allowance by adding new
limitation(s) which require only a limited amount of further consideration or search.
6. The response comprises a perfected 37 CFR 1.131 or 37 CFR 1.132 affidavit or declaration (i.e. a new
declaration which corrects formal defects noted in a prior affidavit or declaration) which can be determined
to place the application in condition for allowance with only a limited amount of further search or
consideration.

The change in AF practice is the phrase “limited amount of further consideration or search.” Examiners are directed
to decide whether the nature and extent of the amendments/arguments presented in the AF response can be
considered within the “limited amount” of time (3 hours) authorized by the AFCP program. If not, Examiners are
directed to treat the AF response under the existing rules and will not receive the extra 3 hours.

Hopefully, the AFCP program will expand the scope of AF practice. For several years, like many practitioners I
have used AF amendments sparingly because they do not advance prosecution: Examiners are too quick to deny
entry of any amendments and to consider any additional arguments. I have used AF amendments mostly to clarify
the issues (for appeal) or to clarify the Examiner’s position on the prior art.

While Examiners will be motivated to consider a submission under the AFCP program, this will not change the
timing issues. As with any AF amendment, the response period to the final Office Action is not tolled by filing of
the AF amendment. So you must watch the docket carefully to make sure the application does not go abandoned
because of an Examiner delay in issuing the Advisory Action.

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April 2012 IP Legal Minute

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