The Beginning of the End for the USPTO’s After Final Consideration Pilot Program 2.0

Background on AFCP 2.0
The AFCP 2.0 was launched to reduce the number of Requests for Continued Examination (RCE) filings and improve communication between applicants and examiners after a final rejection. It allowed applicants to submit non-broadening claim amendments for further consideration without incurring extra fees beyond the standard filing costs.

Key benefits of the AFCP 2.0 include:

• Resolution of Final Rejections Without an RCE: Applicants could address issues after a final rejection by submitting non-broadening claim amendments, potentially avoiding the need for a costly and time-consuming RCE.
• Enhanced Communication: The program promoted direct interaction between applicants and examiners through interviews, helping clarify rejections and amendments, which could lead to quicker resolutions.
• Cost-Effective: AFCP 2.0 provided a no-cost option (aside from standard filing fees) to further prosecute claims after final rejection, helping applicants move their applications forward without the added costs of RCEs or appeals.

Why Expiration Now?
The USPTO’s decision to terminate the AFCP 2.0 was primarily driven by the high costs of administering the program—estimated at over $15 million annually—and its widespread use without direct cost recovery. In April 2024, the USPTO proposed a fee structure for AFCP 2.0 requests, ranging from $100 for micro entities to $500 for undiscounted entities, to help offset these expenses. The fees were intended to cover the additional time examiners needed to conduct supplemental searches on proposed amendments. However, in response to public concerns about the fees, the USPTO opted to end the program rather than implement the new charges.

This termination also aligns with the USPTO’s broader efforts to reduce reliance on supplemental programs and promote earlier resolution of issues during prosecution. With more than 60,000 requests filed annually since 2016, the high demand for AFCP 2.0 placed further strain on USPTO resources, contributing to the decision to discontinue the program.

Strategic Adjustments to U.S. Patent Prosecution Practice
With the termination of the AFCP 2.0, the USPTO has not introduced a direct replacement for the program. However, several existing mechanisms remain available for applicants to address final rejections without filing a RCE or proceeding to an appeal. These options include:

• Amendments Under 37 CFR 1.116(b): Applicants can submit non-broadening amendments after a final rejection, aiming to either place the application in condition for allowance or better position it for appeal.
• Pre-Final Alternative Claims: Presenting better-focused alternative claims before a final rejection (i.e., in response to an initial rejection) can help avoid the need for amendments after final action. In our experience, this approach has proven effective, as adding such claims earlier in the process is often preferable to waiting until after a final action when the examiner is not required to accept them. If the examiner accepts the alternative claims, this gives the applicant something that it can accept and issue in a patent, while still leaving the applicant with the choice to continue pursuing broader claims in a separate application. This approach is particularly worth attention for companies that file initially in foreign countries, as the approach to claim drafting and interpretation during examination in the United States can vary from other countries. For example, it is not unusual for claims to be interpreted more broadly in the United States (the broadest reasonable interpretation standard) than in other jurisdictions, which can lead to prior art rejections in the United States and may require some claim language changes to overcome. Having alternative language can help force the examiner to consider (and hopefully allow) claims before reaching the point that an RCE is required to allow further prosecution.
• Leveraging Examiner Interviews: Examiners may still hold interviews with applicants to resolve issues after a final rejection, offering a chance to advance prosecution without the need for a costly RCE. Even better, ask the examiner for an interview before responding to the first office action, as that may enable the applicant to resolve some differences over the scope of claim language and the like before the final action stage.
• Pre-Appeal Brief Request for Review: Applicants can file a pre-appeal brief request alongside a Notice of Appeal. This allows a panel to review the case and determine whether a legitimate issue for appeal exists, potentially avoiding a full appeal.

While these alternatives do not fully replace AFCP 2.0, they remain viable strategies for efficiently addressing final rejections and advancing prosecution. As noted in the USPTO’s fee setting rulemaking earlier this year, the USPTO proposed increasing RCE fees. For example, for undiscounted entities, the fees are changing from (a) $1360 for the first request and $2000 for each request thereafter to (b) $1500 for the first request, $2500 for the second and $3600 for each one thereafter. Thus, the USPTO is clearly trying to achieve more compact and efficient prosecution, and using the above approaches may avoid the need to incur such escalating fees for prolonging prosecution.

Conclusion
In summary, the termination of AFCP 2.0 is expected to shift patent prosecution strategies, likely leading to an increase in RCE filings as applicants lose access to the program’s benefits. Examiner interviews will play a more critical role in resolving issues post-final rejection, and the pre-appeal brief request process may become a favored strategy for avoiding delays, alongside the use of pre-final alternative claims. As the December 14, 2024, deadline approaches, it is crucial for applicants to take advantage of AFCP 2.0 while it is still available. We are here to help our clients navigate these changes, assess pending applications, and develop strategies to address final rejections before and after the program ends.