The U.S. Patent and Trademark Office (USPTO) recently initiated a Post-Prosecution Pilot Program (P3) to enhance prosecution during the time period after a final rejection and prior to the filing of a notice of appeal. Specifically, the USPTO has indicated the goals of P3 are to (1) increase the value of after final practice, (2) reduce the number of appeals and issues to be taken on appeal to the Patent Trial and Appeal Board (PTAB) as well as the number of requests for continued examination, and (3) streamline the options available to an applicant during after final practice.

Applicants may participate in the pilot program by filing a request for reconsideration under P3 within two months from the mailing date of a final rejection and prior to filing a notice of appeal. The request must be submitted along with a response to the final rejection containing no more than five pages of argument. The response may optionally include a proposed non-broadening amendment to the claims; however, extensive claim amendments will not be permitted. Most applications are eligible to enter P3, although reissue, design and plant applications as well as reexamination proceedings are expressly precluded. There is no additional USPTO fee to participate in P3.

After a timely and compliant P3 request is accepted by the USPTO, a panel of examiners experienced in the relevant field of technology, including the examiner of record, will hold a conference with the applicant to review the response to the final rejection. The applicant’s participation in the conference is limited to 20 minutes. The request for participation in P3 must include a statement that the applicant is willing and available to participate in the conference. Scheduling of the conference lies in the discretion of the USPTO, and the conference must occur within 10 days from the date the USPTO first contacts the applicant to schedule the conference. The conference may be held in person, by telephone, or by a video conferencing tool set up by the USPTO.

The applicant is informed of the panel’s decision in a written Notice of Decision. The panel may (1) uphold the final rejection, (2) allow the application, or (3) reopen prosecution, in which case a new Office Action will be mailed. The panel may also recommend proposed amendments that would lead to an allowance. If the final rejection is upheld, the applicant must take further action to avoid abandonment prior to the statutory date set forth in the final rejection. A decision to uphold the final rejection is subject to appeal.

Viable Option, Limited Participation

P3 provides an interesting option following final prosecution that many applicants may want to pursue. Additionally, P3 affords applicants not only the opportunity to make an oral presentation regarding their response to the final rejection, which previously was not always be permitted, but allows the applicant to make the presentation before new additional examiners who may view the case differently than the examiner currently assigned to the case. Thus, P3 may prove to be beneficial in overcoming some final rejections.

Participation in P3 is limited, as the USPTO started accepting requests on July 11, 2016 and will continue to accept requests until the earlier of either January 12, 2017 or the date the office accepts 1,600 compliant requests to participate in the program. Further, each technology center is limited to accepting 200 compliant requests, so some technology centers may close the program earlier.