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

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.

Are Provisional Patent Applications Published?

The general rule is that provisional patent applications are not published by the U.S. Patent Office.  However, there are situations where a provisional patent application may become publicly available for the public to inspect.  See for more information about the publication of provisional patent applications and the possible public availability of a provisional patent application.

Benefits of Using Provisional Patent Applications for Inventors and Small Businesses

Provisional patent applications (PPA) can be an extremely valuable tool for inventors and small businesses. PPAs provide inventors with one-year of “patent pending” and then automatically expire. It is therefore important to have a formal patent application (a.k.a. “non-provisional patent application”) filed during this one-year pendency period so your formal patent application is able to claim priority to the PPA’s earlier filing date.

A well-drafted PPA can potentially be licensed or sold to a third-party during the one-year period of patent pending. It is important to note that a poorly drafted PPA can have the opposite effect by deterring a potential purchaser or licensor. Also, if you are manufacturing displaying your product or displaying it at a product show, you can put the “Patent Pending” notice on the product during the one-year period.

Finally, a PPA is significantly easier to draft than a formal patent application which requires the complex claims section and is examined by the U.S. Patent & Trademark Office. Using commercial tools such as PatentWizard software (owned by Neustel Software, Inc.), you will be able to easily prepare your own quality PPA at a fraction of what a patent attorney would charge – and you just might write a better PPA!

BPAI Reports Dramatic Rise in Appeals in January 2009

The Board of Patent Appeals and Interferences (BPAI) has reported a large increase in BPAI appeals and in its backlog.  The backlog of appeals has almost doubled to over 10,000 pending appeals.  This is the result of the USPTO implementing strict review procedures which have result in an allowance rate of only about 42% (historically the allowance rate has been around 70%).  Changes are occuring at the USPTO as I write this post, so we should see the BPAI appeals level off before the end of the year (and hopefully see the allowance rate get to a healthier level).

“Obvious to Try” Doctrine (In re Kubin)

The Federal Circuit relied upon the “obvious to try” doctrine to uphold a USPTO ruling that a patent applicant’s DNA molecules encoding a protein known as ‘NAIL’ were obvious over the combined prior art references.  The Federal Circuite stated that “obvious to try” is erroneously equated to obviousness if (1) the inventor is faced with “numerous possible choices … where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful” or (2) “the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.”  The Federal Circuit ruled in the Kubin case that a skilled artisan would have had a “reasonable expectation of success” in obtaining the claimed invention in light of the prior art.  The Federal Circuit further declined to adopt any “formalistic rules” with respect to whether prior art is predictable or unpredictable.  In re Kubin 08-11843