The United States Patent and Trademark Office (USPTO) launched a new Post-Prosecution Pilot (P3) on July 11, 2016. According to the USPTO, P3 was initiated 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. It is designed to increase the value of after final practice; reduce the number of appeals and the issues taken to the Patent Trial and Appeal Board (PTAB); reduce the number of Requests for Continued Examination (RCE); and streamline the options available to an applicant during the final practice. Effectively, it builds on features from other PTO programs, namely, Pre-Appeal Brief Conference and After Final Consideration 2.0 pilot programs.
The P3 pilot program will run July 11, 2016 until either January 12, 2017, or the date in which the USPTO has accepted a total of 1,600 compliant requests, whichever occurs first. Each individual technology center will accept no more than 200 compliant requests.
Under this new program, an applicant can request to participate in a conference with a panel of examiners, including the examiner of record, to review the applicant’s response to the final rejection. The conference will begin with the applicant’s oral presentation of no more than 20 minutes. The USPTO hopes through this process, issues can be resolved with no need of an appeal. The applicant will be notified of the panel’s decision in writing.
Applicants who wish to participate in the Post-Prosecution Pilot Program must file a request for consideration within two months from the mailing date of the final rejection prior to filing a notice of appeal. The request must include a response to the final rejection and a statement saying the applicant is willing and available to participate in the P3 conference. Optionally, a proposed non-broadening amendment to one or more claim(s) can also be sent.
The Post-Prosecution Pilot Program, according to the Patent Office, responds to stakeholder input gathered during public forums held in support of the Enhanced Patent Quality Initiative. The USPTO is requesting the public’s input and suggestions in hopes to improve after final practices and reduce the number of appeals taken to the Patent Trial and Appeal Board (PTAB) as well as reduce the number of RCEs.
To view the USPTO notice: https://www.gpo.gov/fdsys/pkg/FR-2016-07-11/pdf/2016-16423.pdf