Sometimes, patent examiners can be a little stubborn. And,
let's be honest, patent applicants are no better. What that
means is that sometimes examination can get bogged down in an
unfortunate stalemate. Traditionally, the favoured approach for
resolving such a situation involves a lengthy (and often costly)
formal appeal process.
On 11 July 2016, the USPTO commenced a new pilot program called
the Post-Prosecution Pilot Program ("P3"). This program
provides an alternative to filing a formal appeal during
prosecution of a US patent application.
In short, the P3 program provides a US patent applicant the
opportunity to be heard by a three-examiner panel (in a 20 minute
discussion) about the rejections that have been raised against the
application. Such an open discussion with examiners was not
available with the Pre-Appeal Program. Perhaps more importantly,
under the P3 program the applicant receives substantive feedback
from the panel.
To be eligible for the P3 program, the patent application must
have received an Office Action with a final rejection. A request
for consideration under the P3 program must:
Be filed within two months of the mailing date of the Office
Action containing the final rejection;
Be accompanied by a submission of arguments of no more than
five pages and optionally a proposed non-broadening claim
Include a statement that the applicant is willing and available
to participate in the conference within 10 days from when contacted
by the Office.
There is no fee required to request consideration under the P3
The outcome of the P3 program is a Notice of Decision which will
indicate one of the following: (a) upholding the original
examiner's point of view (b) determining that the application
should be allowed; or (c) prosecution return to Examination with
additional feedback and directions for both sides.
This is a limited-time offer, with the program running from 11
July 2016 to 12 January 2017 (six months) or the date the Office
accepts 1,600 compliant requests, whichever comes first. In
addition, each Technology Center within the USPTO can accept no
more than 200 compliant requests, meaning a Technology Center might
close out of the program before the P3 program ends for the entire
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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leading Intellectual Property firms in 2015.
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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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