USPTO News Briefs -- May 28, 2013

by McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Modifies After Final Consideration Pilot Program

USPTO SealEarlier this month, the U.S. Patent and Trademark Office published a notice in the Federal Register (78 Fed. Reg. 29117) regarding modifications to the After Final Consideration Pilot Program (AFCP).  The AFCP, which was implemented in April 2012, provides examiners with a limited amount of non-production time -- three hours for utility and reissue applications -- to consider responses filed following a final rejection (see "USPTO to Assess After Final Consideration Pilot Program").  When the program was originally implemented, the Office indicated that when an examiner determines that "the nature and extent of the amendments or arguments presented in the response can be fully considered within the limited amount of time authorized by the [AFCP]," the examiner should consider the after final response, and when the examiner determines otherwise, the examiner "should treat the response according to current practice, without non-production time authorized."

In implementing the original AFCP, the Office described six "limited situations [in which] further amendments or arguments may be considered" under the AFCP:

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 Office's notice regarding the modified program, otherwise known as the After Final Consideration Pilot Program 2.0 (AFCP 2.0), indicates that there are three main differences between the original AFCP and the AFCP 2.0:  (1) an applicant must file a request to participate in the AFCP 2.0; (2) a response after final rejection under the AFCP 2.0 must include an amendment to at least one independent claim; and (3) when a response does not result in a determination that all pending claims are in condition for allowance, the examiner will request an interview with the applicant to discuss the response.  The notice also specifies that the requirements for participating in the AFCP 2.0 are:

(1) a transmittal form that requests consideration under AFCP 2.0 (the Office suggests that applicants use form PTO/SB/434);
(2) a response under 37 CFR 1.116, including an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect;
(3) a statement that the applicant is willing and available to participate in any interview initiated by the examiner concerning the accompanying response (according to the notice, "willing and available" means that the applicant is able to schedule the interview within ten (10) calendar days from the date the examiner first contacts the applicant);
(4) any necessary fees (e.g., a request filed more than three months after the mailing of a final rejection must include the appropriate fee for an extension of time under 37 C.F.R. § 1.136(a)); and
(5) the required papers must be filed via the EFS-Web.

The AFCP 2.0 took effect on May 19, 2013, and the pilot program will run until September 30, 2013.  The Office notes that the AFCP 2.0 is intended "to reduce pendency by reducing the number of Requests for Continued Examination (RCE) and encouraging increased collaboration between the applicant and the examiner to effectively advance the prosecution of the application."

USPTO Announces Patent for Humanity Winners

P4hLast month, the U.S. Department of Commerce announced the winner of the USPTO Patents for Humanity pilot program.  The Patents for Humanity pilot program, which was launched in February 2012, is a competition recognizing patent owners and licensees who address global challenges in health and standards of living.  The competition was divided into four categories:  medical technology (with separate subcategories for medicines & vaccines and diagnostics & devices), food and nutrition, clean technology, and information technology.  Winners received accelerated processing of select matters at the USPTO in addition to recognition for their work.  The 2012 winners were as follows:

Medical – Medicines & Vaccines
• Gilead Sciences, for making HIV drugs available to the world's poor using a network of generics manufacturers in Asia and Africa.
• University of California, Berkeley, for developing research and license agreements to provide a lower-cost, more reliable way to produce anti-malarial compounds.

Medical – Diagnostics & Devices
• SIGN Fracture Care International, for distributing low-cost fracture implants to speed healing in developing world hospitals.
• Becton Dickinson (BD), for creating a fast, accurate TB diagnosis machine and placing 300 systems in 22 High Burden Countries.

Food & Nutrition
• DuPont Pioneer, for developing an improved strain of sorghum fortified with more protein and vitamins for use in sub-Saharan Africa.
• Intermark Partners Strategic Management LLP, for extracting edible protein and vitamins from waste rice bran in Latin America.

Clean Tech
• Procter & Gamble, for distributing a small chemical packet which removes impurities and contaminants from drinking water and has purified nearly 5 billion liters worldwide.
• Nokero, for delivering solar light bulbs and phone chargers for off-grid villages through local entrepreneurs.

Information Tech
• Sproxil, Inc, for deploying a system to identify counterfeit drugs with an ordinary cell phone in sub-Saharan Africa.
• Microsoft Corporation, for providing machine learning tools that allow health researchers to better analyze large data sets.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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