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IP Alert: USPTO Announces Post-Prosecution Pilot Program for After Final Practice

July 13, 2016

In the normal course of patent prosecution at the U.S. Patent and Trademark Office (USPTO), an applicant receiving a final rejection will often present an amendment pursuant to a request for continued examination or file an appeal to the Patent Trial and Appeal Board. Some years ago, the USPTO instituted a pilot program to permit an applicant to request a pre-appeal brief review of an examiner’s final rejection by an ad hoc panel of (usually) three examiners. This program helps to avoid many needless appeals but requires a relatively costly government fee. Also, this pre-appeal process typically provides no substantive information to the applicant when the request yields an unfavorable result. Another more recent pilot program called the “After Final Consideration Pilot 2.0” permits an applicant to submit a post-final amendment that narrows at least one claim. This program often yields substantive progress in appropriate cases, but is subject to numerous qualifying conditions and limitations.

Effective now, the USPTO is running a new pilot program, the Post-Prosecution Pilot ("P3") Program. A recent announcement in the Federal Register provides the details.

In short, following a final rejection, an applicant can, without incurring any fees, submit a response (with or without a narrowing amendment) and seek consideration under the P3 program. An ad hoc panel of examiners conversant in the relevant technology will gather to consider the request. Unlike the other two active pilot programs, under the P3 program, the applicant can supplement a written response with a 20-minute oral presentation (conducted in person, via telephone, or via an approved video-conferencing tool). This request must be submitted within two months of the mailing of the final rejection. It does not appear that extensions of time are available.

As with a brief in support of a request for a pre-appeal brief review, a P3 submission is limited to five pages of argument, not counting any pages that present only amended claims. Presentation materials used during the oral presentation are also placed in the record and do not count against the page limit.

The USPTO is initially limiting this pilot to the first 1,600 requests, subject to a maximum of 200 requests per technology group.

The P3 panel has the authority to re-open prosecution, affirm the final rejection, or allow the application. When affirming a final rejection, the panel will issue a “notice of decision [that] will not contain any additional grounds of rejection or any restatement of a previously made rejection. Instead, 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. . . .” Providing reasons for maintaining the rejection often may be useful to the applicant.

At least one caution is worth noting: Filing a P3 request does not toll the running of the six-month response window from the mailing of the final rejection.

As in the After Final Consideration Pilot, an applicant can submit a narrowing amendment, and as in the pre-appeal program, the applicant’s request will receive the attention of a panel of examiners. But unlike either of those options, the applicant employing the P3 program gets, if not an indication of allowability, a written analysis. Lacking any government fees and offering the opportunity to orally present the applicant’s position to a potentially qualified panel in a somewhat informal manner, the P3 program may well suit the prosecution needs of many applicants.

For more information, please contact Fitch Even partner Steven G. Parmelee, author of this alert.

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