27 Oct 2016 in Newsletter
How Is The Newest USPTO Hybrid Pilot Program Any Different From The Other After-Final Options?
The Post-Prosecution Pilot (P3) Program is a recently announced pilot program at the USPTO that became effective on July 11, 2016, and was developed as part of the USPTO’s ongoing quality enhancement efforts during the period subsequent to final rejection and prior to the filing of a notice of appeal. While the new program can most easily be described as a combination of the main points from each of the first action interview pilot program, the AFCP program, and the pre-appeal program, there is still confusion regarding when to use the P3 program, and how it is different from the other programs.
Initially, it should be noted that, unless extended, this pilot program will be much more short-lived than some of the others mentioned above. Specifically, the P3 program is slated to run only for 6 months or when 1,600 requests have been accepted into the pilot program, whichever comes first. The total of 1600 requests are split up by Technology Center, and the maximum for each technology center is 200 requests. As can be seen by the counter as of Monday, October 17th [Table 1], technology center 3700 has already reached its limit, and technology center 3600 is not far behind.
TABLE 1: Counter by Technology Center (updated as of October 17, 2016)
1600_____70 1700_____120 2100_____107 2400_____144
2600_____120 2800_____121 3600_____179 3700_____200
Thus, if an Applicant has an application pending in 3700, P3 requests are no longer being accepted. Clearly, the demand for this program already has been quite impressive.
The P3 program is open to nonprovisional and international, utility applications filed under 35 USC 111(a) or 35 USC 371 that are under final rejection. Reissue, design and plant applications, as well as reexamination proceedings, are not eligible for P3.
So, what is the P3 program and when is it most beneficial to employ the program for an Applicant? The P3 program allows an Applicant to file an after-final rejection reply, with one or both of amendments and arguments, by the early response date of the Final Rejection. The 2-month early response deadline must be met for the case to qualify under the program. Thus, contrary to the AFCP program, which is also designed so that an Applicant can submit amendments and/or arguments after a final rejection, an Applicant does not have the option of waiting until the 3 month deadline or later under the P3 program.
Similarly to the Pre-Appeal Brief, the after-final submission accompanying the P3 request is limited to 5 pages of arguments, excluding the cover page, the amendments to the claims section, and the conclusion. In other words, the Applicant’s remarks are limited to five (5) pages, but the submission as a whole may be longer. The most exciting and beneficial differences (to Applicants) between the Pre-Appeal Brief request and the P3 request are that there is no fee required for the P3 program and amendments can be submitted.
Once the P3 request is accepted, the USPTO contacts the Applicant to set up a conference within 10 days from the initial contact. At this conference, the Applicant may present demonstratives that illustrate the inventive features of the application, as well as the differences between the claimed invention and the cited prior art. The demonstratives are typically presented in the form of a PowerPoint slide deck, via a video conference set-up with a panel of three (3) examiners. The panel of 3 examiners includes the examiner of record, his/her supervisory examiner, and a neutral third examiner. While the panel participants are similar to those in the Pre-Appeal Brief conference, the positive difference is that the Applicant or Applicant’s representatives are present, and may use the time to present material that can help the panel understand the invention better.
As a result, the ideal candidates for the P3 program are those applications where some misunderstanding exists on the examiner’s part regarding the teachings of the prior art, or where the claimed inventions are more technical in nature. The Applicant is able to present detailed technical explanation that may help the examiners understand the difference between the claimed invention and the cited prior art. The discussion during the conference is completely off-the-record, which may be beneficial to the Applicant in many cases.
As an 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, and because the 2-month early response date is the deadline to file, the decision on whether a submission with a P3 program request is desired must be made shortly after receipt of a final rejection. Where the argument for the patentability relies more on case law than technical differences, or where the invention is simplistic and easy to understand, the P3 program may not be the best option. For example, the P3 pilot program would likely not be useful for arguments or amendments in response to 35 U.S.C. 101 rejections post Alice.
Immediately after the conference is held, the panel renders a decision and then is mailed to the Applicant. The decision is recorded on a summary sheet that merely provides a box indicating whether prosecution is reopened, the case is allowable, or whether the final rejection is upheld. No detailed discussion regarding the reasoning behind the decision is provided is provide under the P3 program in a manner similar to the one-page decision mailed after a Pre-Appeal brief conference is held.
While the P3 program does seem to be a bit of a patchwork taking the positive aspects of the other after-final pilot programs, the program may be most useful when the Applicant wishes to take on active participation in the conference with the panel of Examiners, and when demonstratives explaining very technical inventions would be beneficial to explain the Applicant’s position.