October 2024

The U.S. Patent and Trademark Office (USPTO) recently announced that it will be terminating the After Final Consideration Pilot Program 2.0 (AFCP 2.0). This decision follows public feedback expressing hesitancy toward the proposed fee for participation in the program. Consequently, the program will end on December 15, 2024, with the Office no longer accepting requests after December 14, 2024.

As some background, AFCP 2.0 was introduced as a means of fostering better communication between the USPTO and patent applicants while streamlining the patent prosecution process. It allowed patent examiners extra time, at no cost to applicants, to review and consider responses following a final rejection. This time could also be used to schedule and conduct interviews with applicants if their response did not place the application in condition for allowance.

As AFCP 2.0 nears its expiration, it is essential to consider its potential impact on patent applicants and the broader patent prosecution process, which includes the following considerations:

• Increased Formality After Final Rejection: Without the additional review time provided by AFCP 2.0, patent applicants may encounter a more formalized and potentially rigid prosecution process after a final rejection. This could lead to a rise in Requests for Continued Examination (RCE) filings, which would increase both the time and cost of the prosecution process.
• More Strategic Responses Required: In the absence of the additional review time under AFCP 2.0, applicants may need to adopt more strategic approaches when responding to non-final rejections. This could involve introducing additional claim amendments or arguments earlier in the process to reduce final rejections.
• Potential Backlog Increase: A rise in RCE filings could contribute to an existing backlog of patent applications at the USPTO, further delaying the processing time for applicants seeking patent protection for their innovations.

The expiration of AFCP 2.0 signals a subtle shift in the patent prosecution process, particularly when dealing with final rejections. Applicant may wish to re-evaluate their prosecution processes before the program closes at the end of day on December 14, 2024.

Hosted in Phoenix, Arizona September 23-25, AUTM’s Western Region Meeting brought together leaders and experts from both academia and industry to explore the latest advancements, challenges, and opportunities in technology transfer.

McCoy Russell Partner Justin Wagner had the opportunity to attend informative panels such as a presentation regarding the latest double patenting updates by Rivka Monheit and Donna Cyr and a panel about evaluating IP disclosures using AI, as well as panels discussing the ever-increasing prevalence of AI in patent procurement.

The AI-centered themes at the Western Region Meeting align with IronCrow AI, a technology spinoff from McCoy Russell, which incorporates the use of AI in its toolkit.  IronCrow AI serves to empower patent professionals with cutting-edge solutions, enhancing their ability to innovate and excel in the rapidly evolving field of intellectual property.

The AUTM Western Region Meeting provides a unique platform for professionals to come together, collaborate, and share knowledge. Justin, along with many esteemed peers in AUTM’s Western Region Meeting Planning Committee, have contributed to shaping an engaging, informative, and entertaining experience for all attendees.

In the world of e-commerce, platforms like Amazon and eBay provide a global stage for small businesses and individual sellers to offer innovative products to an increased number of potential consumers. However, the issue of intellectual property infringement—where sellers may unknowingly or deliberately sell counterfeit or unauthorized items—has become a major concern.

On the surface, e-commerce platforms have established policies and systems to tackle intellectual property violations, such as Amazon’s Brand Registry and eBay’s Verified Rights Owner (VeRO) Program, designed to protect brands from counterfeit goods and unauthorized sales. These programs allow rights holders to report infringements, leading to the removal of offending listings after review.

However, the reality is that these platforms do not enforce the full scope of activities that constitute infringement. The law prohibits making, using, selling, or importing a patented product. Each listed activity is sufficient, on its own, to constitute infringement. Nevertheless, most platforms focus only on selling, while tolerating other forms of infringement.

Consider an example. Barry invented a new product and patented it in the United States and China. At some point, Barry notices an unexpected sudden drop in sales, and discovers that an unaffiliated manufacturer based in China is selling the same product on eBay at a price 10% cheaper than Barry.

In theory, either the United States patent or the Chinese patent should be able to prevent sale of the infringing products to customers in the United States. The United States patent prevents it because the manufacturer is importing and selling the products in the United States, and the Chinese patent prevents it assuming the manufacturer is making the products in China. However, when Barry submits a request to eBay to remove the listing based on the Chinese patent, his request is denied on the basis that the seller has set up the listing so that the product can only be sold outside of China. In our example, Barry should still be able to remove the listing based on the United States patent. But what happens if Barry had not pursued a US patent, or it has not yet issued? Even though making the product in China is infringement of Barry’s Chinese patent, e-commerce platforms like eBay will generally not take action unless the infringing product is also sold in China.

E-commerce platforms understandably prefer to have a straightforward rule, where a listing is only taken down if it is patented in a country where it is being offered for sale. But such a rule does not always accurately reflect the law. By having standard practices like this, e-commerce platforms prioritize simplicity over getting the right result.

At McCoy Russell, we have experience in working with e-commerce platforms to achieve the right result, even when it is counter to the standard practices of the e-commerce platforms. We have a proven track record of navigating the complexities of e-commerce platforms, ensuring that our clients’ intellectual property rights are enforced effectively, even when the platform’s standard practices fall short.