On July 11, 2016, the United States Patent and Trademark Office (“USPTO”) published an announcement and a request for comments regarding a new Post-Prosecution Pilot Program (“P3”) applicable to applications under final rejection. Under P3, applicants have the opportunity to present written and oral after-final arguments to a panel of three examiners. See http://www.uspto.gov/patent/initiatives/post-prosecution-pilot.
Applicants may file a request for consideration under P3 within two months of a final rejection, as long as they have not yet filed a notice of appeal. P3 requests may not be filed in reexamination proceedings or for reissue, design, or plant applications. Requests under the P3 program must contain a transmittal form, a response under 37 C.F.R. § 1.116 containing no more than five pages of arguments, and a statement indicating that the applicant is willing to participate in a conference with a panel of examiners. Applicants may also include proposed non-broadening claim amendments in their request.
Following a USPTO determination that a P3 request is compliant with the requirements of the P3 program, a Supervisory Patent Examiner will schedule a conference at which applicants will have twenty minutes to present arguments to a panel of three examiners selected based on their experience in the relevant technology. Conferences may be conducted in-person, via telephone or video conference at the applicant’s discretion. Following the conference, the panel of examiners will issue a written decision that will (1) uphold the final rejection, (2) indicate that the application is in condition for allowance, or (3) reopen prosecution.
The USPTO is implementing P3 to complement its other patent quality enhancement programs—the Pre-Appeal Brief Conference Pilot Program and the After Final Consideration Pilot Program. Stated Goals of the P3 program are to further increase the value of after-final practice, reduce the number of appeals and RCEs filed, and improve the options available to applicants after final rejection. The UPSTO began accepting P3 requests on July 11, 2016 and the program will continue until January 12, 2017 or until 1,600 compliant requests have been filed, whichever occurs first. However, no technology center will accept more than 200 requests. The USPTO will review all comments regarding the P3 program that are received on or before November 14, 2016.