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The New Post-Prosecution Pilot (P3) Program

7/12/2016

The United States Patent and Trademark Office (USPTO) recently launched a new after final program to test its impact on enhancing patent practice during the period subsequent to a final rejection and prior to the filing of a notice of appeal. The Post-Prosecution Pilot (P3) Program combines features of the Pre-Appeal Brief Conference and After Final Consideration (AFCP) 2.0 pilot programs and adds new, requested features, such as providing applicants an opportunity to participate in the process.

The USPTO has three main goals for the P3 program: "(1) [i]ncrease the value of after final practice; (2) reduce the number of appeals and the issues to be taken on appeal to the PTAB and the number of RCEs; and (3) streamline the options available to an applicant during after final practice."

The P3 program began on July 11, 2016, and will run for 6 months or when the USPTO has accepted 1,600 compliant requests, whichever comes first.  However, each individual technology center will accept no more than 200 compliant requests, meaning that the P3 program may close with respect to an individual technology center that has accepted 200 compliant requests, even as it continues to run in other technology centers that have yet to accept 200 compliant requests.

P3 Program Participation Requirements

A July 11, 2016 Federal Register Notice outlined the requirements of the P3 program.  The following are required for entry into the P3 program:

·         A Request Form ("Certification and Request for Consideration under the Post-Prosecution Pilot Program (P3)") must be filed via EFS-Web within two months of the mailing date of the final rejection and prior to filing a notice of appeal;

·         A statement contained within the Request Form that the applicant is willing and available to participate in a P3 conference with a panel of examiners;

·         A response comprising no more than five (5) pages of arguments under 37 CFR § 1.116 to the outstanding final rejection, exclusive of any amendments; and

·         Optionally, a proposed non-broadening amendment to one or more claim(s).

The USPTO also instructed that:

·         There is no fee to participate in the P3 program;

·         Applicant cannot have previously filed a proper request to participate in the Pre-Appeal or the AFCP 2.0 programs in response to the same outstanding final rejection;

·         Once a P3 request has been accepted, no additional response(s) under 37 CFR § 1.116 will be entered, unless requested by the examiner; and

·         It is also impermissible to request to participate in the Pre-Appeal program or request consideration under the AFCP 2.0 program once a P3 request has been accepted.

The P3 Program Process

Once a P3 request is determined to be timely and compliant, a Supervisory Patent Examiner (SPE) “will coordinate a panel experienced in the relevant field of technology to review the response under 37 CFR § 1.116 filed with the P3 request.”  According to the Federal Register Notice, the panel “may include the examiner of record, the SPE, and a primary examiner.” Further, “[e]very reasonable attempt will be made to select panel members with the most expertise in the relevant technological and legal issues raised by the application under consideration.”The Federal Register Notice further provides that, once a P3 request is determined to be timely and compliant, "the Office will [also] contact the applicant to schedule [a] conference."  For the applicant's convenience, "[t]he applicant may arrange to participate in-person, by telephone, or by a video conferencing tool, such as WebEx®."  According to the Federal Register Notice, during the conference, the Applicant will have 20 minutes to present his or her case to the panel after which "[t]he applicant will be excused from the conference." 

After the conference, the panel will decide how the application should proceed.  As with the Pre-Appeal Brief Conference Pilot program, the panel will choose from among the following three options:

·         "Final rejection upheld";

·         "Allowable application"; or

·         "Reopen prosecution."

Additionally, “[i]n appropriate circumstances, a proposed amendment may accompany the notice of decision proposing changes that, if accepted, may result in an indication of allowability.”

If the panel issues a notice of decision to uphold the final rejection, "the notice of decision will summarize the status of the pending claims (allowed, objected to, rejected, or withdrawn from consideration) and the reasons for maintaining any rejection."  It is important to note that as with any prosecution after final, filing a P3 request does not stop the statutory six-month clock running from the final rejection.  Accordingly, "[i]f a notice of decision indicates 'final rejection upheld,' the time period for taking further action in response to the final rejection expires on (1) the mailing date of the notice of decision; or (2) the date set forth in the final rejection, whichever is later."  Thus, if the panel does not allow the application or reopen prosecution, "the applicant must file a notice of appeal or RCE within the statutory period for response to the final rejection…to avoid abandonment."  

If the panel issues a notice of decision to allow the application, the notice of decision will be mailed concurrently with a Notice of Allowance.

If the panel issues a notice of decision to reopen prosecution, "the notice of decision will state that the rejection(s) is/are withdrawn and a new Office action will be mailed. The notice of decision also will state that no further action is required by the applicant until further notice."  In other words, the clock stops running against the Applicant until a new Office Action is issued.

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