We recently saw a practitioner request feedback regarding a potential strategy under the After Final Consideration Pilot (AFCP) 2.0 Program. The practitioner noticed that an AFCP 2.0 Request can be filed after filing a Notice of Appeal (NOA), as long as neither a Pre-Appeal Brief Conference Request nor an Appeal Brief has been filed. In the practitioner’s view, filing an AFCP Amendment after the NOA is a strategy to supplement an Amendment carrot (飴) with an appeal stick (鞭). In this practitioner’s view, the expense of the Notice of Appeal is offset by the threat it offers.
We cannot agree.
At the outset, we should clarify the relevant question: how much more favorably will an Examiner consider an AFCP Amendment, if a Notice of Appeal has been filed? After all, Examiners can and sometimes do allow claims in response to an Appeal Brief or an AFCP Amendment. So, the question is not whether a beneficial result can be achieved; the question is how much more likely the result is to be achieved.
To answer this question, we should consider the basic premises for allowance under the AFCP Program and the significance of an appeal. Regarding the AFCP Program, an Examiner has discretion to treat the AFCP Amendment under pre-pilot procedure, as we increasingly have seen lately. In this situation, the Applicant must file a Request for Continued Examination (RCE) to have the Amendment entered. Of course, the RCE will generate additional “counts” for the Examiner, so Examiners prefer that the RCE is filed. Therefore, an Examiner is most likely to allow an application on considering the AFCP Amendment, if the Examiner believes the Applicant is unlikely to file an RCE.
Why wouldn’t an Applicant file an RCE? Typically, the reason is because of its expense. However, this practitioner’s strategy is to file an unnecessary Notice of Appeal and, possibly, an Appeal Brief. The expense of the Notice of Appeal and Appeal Brief strongly suggests the Applicant has the budget to file an RCE as well. Indeed, this suggestion is strengthened, because the Notice of Appeal and Appeal Brief might be unnecessary. Therefore, such reckless filing dismisses any uncertainty whether their budget can cover an RCE: of course, they can pay for the RCE!
Further, this practitioner’s goal is to use the appeal to punish the Examiner. Although that strategy might be reasonable, the filing of the AFCP Amendment undermines that goal. The reason is the AFCP Amendment provides the Examiner a way to escape the appeal. Specifically, the Examiner has discretion regarding entry and consideration of the AFCP Amendment. If the Examiner declines to enter the AFCP Amendment, the Applicant must decide whether to pursue the unamended claims on appeal or to file an RCE to pursue the amended claims. Procedurally, the filing of an RCE withdraws the appeal. So, isn’t an Examiner likely to simply decline entry of the AFCP Amendment?
Couldn’t the Applicant simply decline to file the RCE and proceed with the appeal? Certainly, but appeals are premised on the assumption that Applicants believe they are entitled to broad claims. By filing the AFCP Amendment, the Applicant is signaling that, perhaps, they are not entitled to such broad claims. This sign is not one that the Patent Trial and Appeal Board will overlook.
Finally, the above discussion relates to the Examiner considering the AFCP Amendment and an Appeal (or Pre-Appeal) Brief. What is the persuasive effect if the Examiner considers the AFCP Amendment before the Brief is filed (but after the Notice of Appeal has been filed)?
Here, the practitioner’s strategy is premised on (a) the Examiner noticing that a Notice of Appeal was filed, (b) calculating whether the Notice of Appeal was filed as an extension of time or not, and (c) “reading the air” about the Applicant filing a seemingly unnecessary Notice of Appeal.
First, Examiners in the Examining Corps do not receive a notification when a Notice of Appeal is filed. Rather, they only receive notifications upon the filing of a work product, such as a Pre-Appeal Brief, a formal Appeal Brief, or an AFCP Amendment. So, it is possible, if not likely, the Examiner in such a situation will not notice the filing of a Notice of Appeal.
Second, Legal Instruments Examiners—not Examiners in the Examining Corps responsible for substantive examination—are concerned with whether the Notice of Appeal is extending the timeline for reply. So, even if the Examiner examining the case notices the Notice of Appeal, they are unlikely to consider whether it was filed as an extension of time or not: that is someone else’s job.
However, even assuming (a) and (b) occur, it seems unlikely the Examiner will receive the intended message from “reading the air.” The reason is that the practitioner has overestimated his case. Rather, the Examiner controls entry of any after-final amendments. Therefore, the Examiner also controls the issues on which any appeal will be based. Further, because the Notice of Appeal already has been filed, the Examiner effectively controls the timeline on which the Applicant must respond: the Examiner can simply deprioritize responding to the AFCP Amendment.
All in all, this practitioner’s strategy seems unlikely to produce its intended result. Instead, his strategy seems like an unnecessary expenditure on governmental and professional services. We cannot support his strategy.