The U.S. Patent and Trademark Office (USPTO) recently unveiled a new pilot program designed to assist patent applicants and practitioners during patent prosecution. The Post-Prosecution Pilot program, otherwise known as P3, arises under the Enforced Patent Quality Initiative and incorporates components from two existing programs, the Pre-Appeal Brief Conference and the After Final Consideration Pilot 2.0 (AFCP 2.0).1
In 2005, the USPTO established the Pre-Appeal Brief Conference program in order to afford applicants with an avenue to request a formal review of the patent application rejections prior to incurring the costs of filing an appeal brief when the “rejections of record are clearly not proper and without basis.”2 The Pre-Appeal program requires that the applicant to file a notice of appeal a request and a five-page or less set of arguments relating to claim patentability as the basis for the request.3
In 2013, the USPTO established the AFCP 2.0, which includes an interview with the examiner and likewise allows examiners to consider office action responses filed after a final rejection.4 In order to qualify, a response must include remarks and amendments that “may require further search and consideration, provided that at least one independent claim include a non-broadening amendment.”5 If the response does not place the application in condition for allowance, the examiner may then proceed to conduct an interview with the applicant to identify patentable claim subject matter.6
In a continued effort to increase patent quality and prosecution efficiency, last year the USPTO launched the Enforced Patent Quality Initiative (EPQI) with consideration for applicants, the USPTO’s backlog, and patent quality.7 The USPTO solicited comments from the general public in order to “guide the agency in formulating, prioritizing, and implementing changes to enhance[e] patent quality.”8 The new Post-Prosecution Pilot program (P3) is the result of the EPQI and is geared towards improving “Excellence in Customer Service.”
The P3 program began on July 11, 2016 and will run through January 12, 2017, or until the USPTO has received 1,6000 compliant requests.9 P3 incorporates “(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).”10
In order to qualify, a P3 request must be filed within two months of mailing of the final rejection and before the filing of a notice of appeal, the application must be a non-provisional or international utility application filed under 35 U.S.C. § 111(a) or 35 U.S.C. § 371, and the applicant cannot have previously filed a compliant request to participate in either the Pre-Appeal or the AFCP 2.0 on the same outstanding final rejection.11
Furthermore, to be considered compliant, the P3 request must contain a request form, a statement of willingness to participate in a conference with the panel of examiners, a response including no more than five pages of arguments under 37C.F.R. 1.116, and optionally, a proposed non-broadening amendment to one or more claim(s).12 The USPTO will enter timely and compliant requests into the P3 program and then subsequently contact the applicant to schedule the mandatory conference.13 During the conference, the applicant will have twenty (20) minutes to make their oral presentation to the panel of examiners.14 Following the conference, the panel will notify the applicant of their decision in writing, either upholding the final rejection, allowing the application, or reopening prosecution.15
The USPTO’s goals for the P3 program include (1) increasing the value of after final practice, (2) reducing the number of appeals, issues to be taken on appeal to the PTAB, and the number of RCEs, and (3) streamlining options for applicants during the time period after a final rejection.16 The P3 program offers a useful option for applicants and practitioners when deciding how to proceed following a final rejection.