USPTO Post-Prosecution Pilot Program

By: Kelly C. McKinney

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On July 11, 2016, the U.S. Patent and Trademark Office (USPTO) launched a Post-Prosecution Pilot Program (“P3”) in further advancement of its Enhanced Patent Quality Initiative for improving patent quality.  P3 is an addition to the after-final practice landscape, which also includes the Pre-Appeal Brief Conference Pilot Program (“Pre-Appeal program”) and the After Final Consideration Pilot Program 2.0 (“AFCP 2.0”).  Indeed, P3 is a hybrid of the Pre-Appeal program and AFCP 2.0 with the additional unique opportunity to make an oral presentation to a panel of examiners.  Specifically, the USPTO describes P3 in this way:

[T]he P3 provides for (i) an after final response to be considered by a panel of examiners (Pre-Appeal), (ii) an after final response to include an optional proposed amendment (AFCP 2.0), and (iii) an opportunity for the applicant to make an oral presentation to the panel of examiners (new).  81 Fed. Reg. 44845, 44846 (July 11, 2016).

In practice, participation in P3 occurs after the mailing of a final Office Action and before the filing of a Notice of Appeal.  A P3 request must be filed by the early response deadline (i.e., within two months from the mailing date of the final Office Action).  The P3 request must include: (1) a transmittal form, (2) an after final reply to the outstanding final Office Action that includes no more than five pages of argument, and (3) a statement that the applicant is willing and available to participate in a conference with a panel of examiners, which may include the examiner of record.  At the applicant’s request, the after final reply may also include a non-broadening amendment to one or more claims, which will not count towards the five page limit.  The conference, which is limited to twenty minutes, may be in person, via telephone, or via video conference.  No USPTO fee is required with the P3 request, and all documents associated with the request must be filed electronically.  P3 concludes when the panel issues a Notice of Decision, which provides a brief written summary of the panel’s decision.

The USPTO hopes that P3 will reduce the number of appeals to the Patent Trial and Appeal Board (or will at least simplify issues prior to appeal) and reduce the number of Requests for Continued Examination, as the program seeks to enhance the value of after-final practice for the applicant.  Unless extended, P3 will run until January 12, 2017, or until 1,600 total compliant P3 requests are received, whichever occurs first.  The USPTO welcomes public comment on P3 and suggestions for improvement until November 14, 2016.