First published in Law360
A new U.S. Patent and Trademark Office (USPTO) program, named "P3" for Post-Prosecution Pilot Program, may simplify the process applicants follow to get a patent application allowed after final rejections, avoiding the expense of appeals, by providing them with an opportunity to meet with examiners to plead their case. Patent applicants who have received a final rejection from an examiner can, under the P3 Program, submit five pages of arguments addressing why the rejection is wrong. Applicants are then able meet with a panel of three examiners to discuss the rejection. P3 may provide an opportunity for applicants to try and get a patent issued prior to pursuing an appeal to the PTAB. Since the P3 processes includes time with two examiners who were not involved in issuing the initial rejection, it is possible allowances may increase.
Law360 sought comment from Finnegan partner Adriana L. Burgy on the USPTO's new program. Said Burgy, "The program's inclusion of examiners who will look at the case with fresh eyes may work in favor of applicants, since the newcomers may have different views or see things the examiner who rejected the application did not. It's another avenue for applicants to push for the allowance of an application and better understand what the issues are." In speaking to the Pre-Appeal Program, she added that many patent applicants feel that program is "sometimes just a rubber stamp; You don't get to see what went into the decision or what was discussed." Burgy also noted that with the P3 program's imposed limit of five pages for arguments and a 20-minute meeting, that there will be a premium on conciseness for participants in the program.