After Final Consideration Pilot 2.0 (AFCP 2.0)

The USPTO announced the updated After Final Consideration Pilot 2.0 which expands the abilities of patent applicants to work with USPTO Examiners after a Final Office Action has been received.  To participate in the After Final Consideration Pilot 2.0, after receiving a Final Office Action, patent applicants simply need to file a response that includes: 

  1. Transmittal Form.  A transmittal form, such as form PTO/SB/434, that identifies the submission as an AFCP 2.0 submission and requests consideration under AFCP 2.0;
  2. Non-Broadening Amendment to Independent Claim.  A response that includes an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect;  and
  3. Availability Statement.  A statement that the applicant is willing and available to participate in any interview initiated by the examiner concerning the accompanying response.

You can request the AFCP 2.0 with any response to a final rejection filed after May 18, 2013 and up to September 30, 2013.  Hopefully the USPTO will implement a permanent version of this program after the AFCP 2.0 which has been successful in helping expedited prosecution of patent applications.

Government Information About the AFCP 2.0

Virtual Patent Markings

Under the AIA, patent owners may now “virtually mark” their products with a patent notice by affixing to the patented article the word “Patent” (or abbreviated to “Pat.”) followed by the URL address of the web page that will have the patent(s) associated with the product.  We have more information about Virtual Patent Markings on our patent law firm website including examples of how to mark your products and example virtual marking web pages.

USPTO – Warning About Third-Party Solicitations

The USPTO has an excellent page that informs the public about non-USPTO solicitations that may resemble official USPTO communications.  You can view the USPTO’s warning page at

Below is the text from the USPTO website as of October 23, 2012:

*********************** FROM USPTO WEB PAGE **************************

WARNING: Non-USPTO Solicitations That May Resemble Official USPTO Communications

Be aware that private companies not associated with the United States Patent and Trademark Office (USPTO) often use trademark application and registration information from the USPTO’s databases to mail or e-mail trademark-related solicitations.  Trademark applicants and registrants continue to submit a significant number of inquiries and complaints to the USPTO about such solicitations, which may include offers: (1) for legal services; (2) for trademark monitoring services; (3) to record trademarks with U.S. Customs and Border Protection; and (4) to “register” trademarks in the company’s own private registry. 

These companies may use names that resemble the USPTO name, including, for example, the terms “United States” or “U.S.”  Increasingly, some of the more unscrupulous companies attempt to make their solicitations mimic the look of official government documents rather than the look of a typical commercial or legal solicitation by emphasizing official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records.  Many refer to other government agencies and sections of the U.S. Code.  Most require “fees” to be paid.  

Some applicants and registrants have reported paying fees to these private companies, mistakenly thinking that they were paying required fees to the USPTO.  So, be sure to read trademark-related communications carefully before making a decision about whether to respond.  All official correspondence will be from the “United States Patent and Trademark Office” in Alexandria, VA, and if by e-mail, specifically from the domain “”

If you receive a trademark-related solicitation that you believe is deceptive, you may file an on-line consumer complaint with the Federal Trade Commission (“FTC”), at  Although the FTC does not resolve individual consumer complaints, it may institute, as the nation’s consumer protection agency, investigations and prosecutions based on widespread complaints about particular companies or business practices.  

If you have received a communication that you believe is misleading, the USPTO encourages you to e-mail us at  When notifying us, please also:

  1. Include a copy of the communication (including the envelope it came in) if available;
  2. Indicate whether the recipient thought the communication was an official U.S. government communication or had to ask an attorney or the USPTO whether it was legitimate;
  3. Indicate whether fees were mistakenly paid in response to the communication and, if so, provide a copy of the cancelled check.  Please also specify what services, if any, were provided in exchange for the payment made.

The following are examples of just some of the non-USPTO solicitations about which we have received complaints within the past several months.  None of these are official U.S. government or international governmental notices.  Please click on the name below if you wish to see an image of that entity’s solicitation.

United States Trademark Registration Office

Patent & Trademark Agency

Trademark Registration and Monitoring Office

United States Trademark Maintenance Service

U.S. Trademark Compliance Service



TM Collection

TM Edition

Patent Trademark Register

Register of International Patents and Trademarks

Trademark Renewal Service

Trademark Safeguard – Trademark Monitoring Service

New Patent Fees – Effective October 5, 2012

The USPTO has announced the new patent and trademark fee schedule effective October 5, 2012.  Below is a listing of common USPTO patent fees currently being paid and the fees effective October 5, 2012.

Fee Type

Current Fee

New Fee

Provisional Filing Fee



Utility Filing Fee



Utility Search Fee



Utility Exam Fee



1 Month Extension



2 Month Extension



3 Month Extension






Terminal Disclaimer



Issue Fee



1st Maintenance Fee



2nd Maintenance Fee



3rd Maintenance Fee



Third-Parties Can Now Submit Prior Art Documents to USPTO

Effective September 16, 2012 under the AIA, third-parties can now submit prior art documents for a pending patent application at the USPTO.  35 U.S.C. 122(e) specifies the following for third-party prior art submissions:


(1) IN GENERAL.–Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of–

     (A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or

     (B) THE LATER OF.–

          (i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or

          (ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.

(2) OTHER REQUIREMENTS.–Any submission under paragraph (1) shall–

     (A) set forth a concise description of the asserted relevance of each submitted document;

     (B) be accompanied by such fee as the Director may prescribe; and

     (C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.

U.S. Patent Law Changes for Corporate Entities

Effective September 16, 2012 under the AIA, the following important changes take effect for corporate entities applying for patent protection:

  1. Allowed to be “Patent Applicant”.  Corporate entities can now file patent applications in their own name instead of the name of the inventors as previously required.  Basically, any corporate entity that can show a proprietary interest in the patent rights will be able to apply for patent protection as the “patent applicant”.
  2. Must be Filed by Registered Patent Attorney.  Included within the new changes are requirements that corporate entities cannot file patent applications pro se(including provisional patent applications) and now must file patent applications via a U.S. Registered Patent Attorney. 

A good discussion regarding the new rule changes is located at Patenty-O.

After Final Consideration Pilot (AFCP)

The USPTO announced today the creation of the After Final Consideration Pilot (AFCP) which will provide for amendment of some patent applications after a Final Office Action has been received.  Prior to the pilot program, after a Final Office Action has been issued, a patent applicant typically was unable to make amendments to the patent application.  The AFCP allows for possible amendment of patent applications after a Final Office Action in the following situations: 

  • 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.
  • The amendment places the application in condition for allowance by rewriting objected-to claims in independent form.
  • 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.
  • 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.
  • 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.
  • 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 USPTO has issued Guidelines for Consideration of Responses After Final Rejection.  It is expected that the new guidelines will help alleviate the Request for Continued Examination (RCE) backlog that has occurred at the USPTO.

Private PAIR Tool Released for Downloading PAIR Documents (Beta)

A beta version of PAIRHunter was released on March 26, 2012.  PAIRHunter is a software program developed by Neustel Software, Inc. that will save your patent law firm significant amounts of time in downloading, viewing and managing USPTO documents via Private PAIR.  Instead of logging into Private PAIR to find and download each Private PAIR document identified in a Private PAIR Correspondence Notification, you simply submit the e-mail to PAIRHunter which does all of the work for you!

Visit to learn more and to download the free beta version of PAIRHunter.