“After Final Consideration” Pilot Program Extended by Patent Office

The US Patent and Trademark Office (USPTO) announced that it is extending a popular program that allows patent applicants to submit minor amendments to patent applications even after a final rejection.

The “After Final Consideration” Pilot was launched in May and was scheduled to end on September 30, 2013.  The Pilot will now be extended to include requests filed on or before September 30, 2014.

The Pilot is one of the programs the Patent Office is adopting to reduce the backlog of 90,000 pending patent applications associated with a Request for Continued Examination (RCE).  An RCE is a request by a patent applicant to reopen prosecution of a patent application after a final rejection.

The Pilot also allows patent applicants to potentially avoid the delay and cost associated with an RCE.

Applicants for the Pilot must submit a request and certification for consideration, an amendment to at least one independent patent claim, and any fees that may be required.  The amendment must not “broaden the scope of the independent claim in any aspect.”

The patent applicant must also be willing and available to be interviewed by a patent examiner.

A patent examiner will review the amendment and determine whether it should be accepted for further examination by the USPTO.  The amendment is more likely to be accepted if:

  • the amendment cancels claims or complies with formal requirements in response to objections made in the final patent office action;
  • the amendment rewrites objected-to claims in independent form;  or
  • the amendment incorporates limitations from objected-to claims into independent claims, “if the new claim[s] can be determined to be allowable with only a limited amount of further consideration or search” by the patent examiner.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

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