While the current coronavirus pandemic has impacted patent prosecution, new situations create opportunities for new strategies. Today we discuss the free extensions provided by the USPTO for applicants impacted by the virus.

According to a recent USPTO announcement, the USPTO further extended the time to file certain patent (and trademark) documents and to pay certain required fees, which otherwise would have been due between March 27 and May 31, to June 1, 2020. This is in addition to the prior extension the USPTO had announced on March 31, 2020.

For some patent applicants, these extensions create a unique opportunity with respect to Final rejections. Assuming the applicant qualifies for the extension (i.e., they were impacted by the outbreak as defined in the notice, here), these two months of extension might enable more strategic use of AFCP 2.0 requests, as just one example.

Specifically, the use of AFCP 2.0 requests can be limited to one attempt under normal situations by the practical impact of extension fees while the applicant waits for a response from the examiner. However, with the additional free extensions, the applicant might be able to utilize a strategy with additional follow-up after final responses if the initial request is unsuccessful.

For example, assuming the applicant file an initial AFCP request in March for a case with a 3 month deadline in April, and the applicant is eligible for the free extension. Then assume that the examiner refuses to examine the new amendment as it would require more extensive searching than provided in the limited AFCP 2.0 time and the applicant finds this out in April. The applicant might consider filing a second after final response in April given that the April deadline is extended to May. The second request might attempt a different amendment that might be more in an area that was arguably already searched, for example. While there is no guarantee the second attempt will be successful, the free extension creates another chance to avoid the RCE fee. And with a second month of extension, possibly even a third attempt might be possible. Further, in the case where the examiner accepts the request but nevertheless still rejects the amended claim (e.g., by applying an additional reference), the applicant might consider another after final response with a different amendment or further amendments.

This is just one example of potential new strategies that might be able to be used to a greater extent with the USPTO’s extended time frames for responding to certain deadlines.

Please let me know if you have identified others!

Quick update - only 1 AFCP is possible, but the follow up after final responses can be filed as regular after final responses