United States: Patent Office Announces New Post-Prosecution Pilot Program For Responding To Final Rejections

The Program

On July 11, 2016, the Patent and Trademark Office (PTO) launched the Post Prosecution Pilot (P3) Program, which affords patent applicants an attractive alternative to the procedures currently available for responding to "finally" rejected patent applications.

Generally, after a patent application has been "finally" rejected, an applicant may continue pursuing the application by accepting only allowed claims (if any), filing an appeal, or filing an amendment with a request for continued examination (RCE). These latter two options are expensive and can take large amounts of time.

Over the past few years, the PTO has piloted two test programs that provided additional options to streamline the "after final" process. The first was the Pre-Appeal Brief Conference Pilot Program.1 It allows an applicant to file an abbreviated appeal by requesting that a panel of three experienced examiners review the bases for the final rejection prior to the applicant needing to file a full appeal brief. The second program is called the "After Final Consideration Pilot."2 It provides an opportunity for the examiner to consider an amendment and arguments made after a final rejection, and permits an applicant to request an examiner interview. However, these programs have been mutually exclusive – that is, an applicant could pursue one, or the other, but not both – and did not permit an applicant to present their arguments orally to anyone other than the original Examiner or his or her immediate supervisor.

The P3 program combines features of both these pilot programs and attempts to address some of their deficiencies. Under the P3 program, an applicant can submit an after-final amendment for consideration by a panel of experienced examiners. The applicant may make an oral presentation to the panel, after which the panel will provide a brief written summary of its decision. Unlike the Pre-Appeal Conference Program, there is no fee to file the Request or any requirement to file a Notice of Appeal.

To be eligible for the P3 Program: (1) a non-provisional or international utility application must be under final rejection; and (2) a P3 Request must be filed within two months of the mailing date of the final rejection and before a Notice of Appeal is filed. The P3 Request must also include a statement that the applicant is willing to participate in a conference with the panel. Optionally, the applicant may include a non-broadening amendment. Arguments included in a P3 Request are limited to five pages.

Once a proper P3 Request is made, the PTO will contact the applicant to schedule a conference. The conference may be in-person, telephonic or via video conferencing. The applicant's participation in the conference is limited to 20 minutes. The panel's decision will be limited to (a) upholding the Final Rejection; (b) reversing the Final Rejection and allowing the application; or (c) reversing the Final Rejection, but reopening prosecution. In appropriate circumstances, the panel may propose an amendment with the notice of decision, proposing changes that if accepted, will result in allowing claims.

The P3 program is available for all applications, regardless of filing date, as long as the Request is made between July 11, 2016 and January 12, 2017 (unless the program is extended). The program is limited to the first 1600 Requests filed in the PTO and each individual technology center may accept no more than 200 Requests.

Looking Ahead

The P3 program should enable applicants to avoid some of the costs and delays associated with filing an appeal or an RCE. However, the P3 program is limited in both time and scope and may not be appropriate for every patent application. If an applicant encounters a final rejection, he or she would be wise to consider how the P3 program can be used to further their overall patent strategy.

Footnotes

1. The PTO has extended the Pre-Appeal Brief Conference Pilot Program until further notice.

2. The After Final Consideration Pilot is set to expire on September 30, 2016.

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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