USPTO Post-Prosecution Pilot Program

While not directly related to Patent Trial & Appeal Board (PTAB) practice, today, the USPTO announced the launch of the "Post-Prosecution Pilot Program." (here) The program is designed to provide more feedback to applicants by allowing them to participate in a panel discussion with examiners after a final rejection.

The goal of the Pilot is to reduce the number of appeals to the PTAB. Essentially, the program allows for participation in person, or remotely, in a pre-appeal brief style hearing of the prosecution.

In my view, this type of feedback will be especially valuable to patent applicants (which is why I recommended the same roughly 6 years ago).

The PTO describes the program as a combination of Pre-Appeal and AFCP 2.0, referring to the new, panel hearing option as "P3." 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). Finally, the panel decision will be communicated in the form of a brief written summary.

To be eligible, an application must contain an outstanding final rejection and be (i) an original utility non-provisional application filed under 35 U.S.C. 111(a), or (ii) an international utility application that has entered the national stage in compliance with 35 U.S.C. 371 (see 37 CFR 1.491). A continuing application (e.g., a continuation or divisional application) is filed under 35 U.S.C. 111(a) and is thus eligible to participate in the P3. Reissue, design, and plant applications, as well as reexamination proceedings, are not eligible to participate in the P3.

A request for a response under 37 CFR 1.116 to be considered under the P3 must include the following items: (1) A transmittal form, such as form PTO/SB/ 444, that identifies the submission as a P3 submission and requests consideration under the P3; (2) a response under 37 CFR 1.116

comprising no more than five pages of argument; and (3) a statement that the applicant is willing and available to participate in the conference with the panel of examiners. Optionally, a P3 request may include a proposed non-broadening amendment to a claim(s). There is no fee required.

The program will begin today and extend until either January 12, 2017, or the date the Office accepts a total (collectively across all technology centers) of 1,600 compliant requests to participate, whichever occurs first. Each individual technology center will accept no more than 200 compliant requests, meaning that the pilot will 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.