Author: Stephanie M. Sanders
Editor: Adriana L. Burgy
On July 11, 2016, the USPTO announced the Post-Prosecution Pilot Program, or P3, which is intended to offer applicants another avenue for requesting reconsideration of a final Office Action without filing an RCE or commencing an appeal to the PTAB.
As we previously reported, the Office announced a new after final program that would be a hybrid of the current AFCP 2.0 and Pre-Appeal programs during the Patent Public Advisory Committee (PPAC) Quarterly Meeting Quality Initiative Update back in May. Indeed, the P3 program combines what the Office is calling the “effective features” of the After-final Consideration Pilot (AFCP 2.0), which has been available since 2013, and Pre-Appeal Brief Conference Pilot Program, which has been available since 2005. Although both the AFCP 2.0 and the Pre-Appeal programs remain available, an applicant may choose to request consideration under the new P3 program because of the combination of features offered, including several new options that are not available in either of the predecessor programs. Below are several highlights of the P3 program:
- Applicant files a request to participate in the P3 program within two months of the mailing date of an outstanding final Office Action;
- Applicant has the option to include a proposed non-broadening amendment, which the Federal Register Notice suggests is most useful if it focuses the issues with respect to a single independent claim;
- A panel of Examiners, including the Examiner of Record, will hold a conference to review the applicant’s response to the final Office Action;
- Applicant can participate in the conference by providing a 20 minute presentation before the panel convenes; and
- The panel will provide a Notice of Decision, which will include a written explanation of the panel decision to uphold the final rejection, allow the application, or reopen prosecution, and will also indicate the status of any proposed amendments.
The following chart summaries the requirements of, and differences between, the Office’s three after final initiatives.
|After-final Consideration Pilot (AFCP 2.0)||Pre-Appeal Brief Conference Pilot Program||Post-Prosecution Pilot Program (P3)|
|How Many Requests Will Be Accepted and Until When?||Unlimited, program extended to September 30, 2016||Unlimited, no end date for program||Up to 1,600 total and up to 200 per technology center, program ends January 12, 2017 (if not extended)|
|Time for Filing||Filed in response to Final Office Action||Filed with Notice of Appeal||Filed within 2 months from mail date of a Final Office Action and before filing Notice of Appeal|
|Procedural Requirements||Certification and Request for Consideration Under the After Final Consideration Pilot Program 2.0 (Form PTO/SB/434)||Pre-Appeal Brief Request for Review (Form PTO/AIA/33) and Notice of Appeal under 37 CFR § 41.31||Post-Prosecution Pilot Program (P3) Request Form (Form PTO/SB/444)|
|Argument||Response under 37 CFR § 1.116||Pre-Appeal Brief, with no more than five pages of argument||Response under 37 CFR § 1.116, with no more than five pages of argument|
|Are Amendments Allowed?||Yes, non-broadening amendment to at least one independent claim||No||Yes, optional proposed non-broadening amendment (Notice indicates best use is amendment that focuses the issues with respect to a single independent claim)|
|Who Reviews?||Examiner of Record||Panel of Examiners||Panel of Examiners, with 20 minutes of applicant presentation before panel discussion|
|Result||AFCP Response Form, may include interview summary||Panel Decision, without reasoning||Notice of Decision from Post-Prosecution Pilot Conference, with brief written summary|
The USPTO’s goals of implementing the new P3 program are (1) increasing the value of after final practice, (2) reducing the number of appeals and the issues to be taken on appeal and the number of RCEs, and (3) streamlining the options available to an applicant during after final practice. The Office will be taking comments (until November 14, 2016) on the details of the new program, how well the program serves the Office’s stated goals, and any other suggestions on how to improve after final practice and reduce the number of appeals and issues taken up for appeal and the filing of RCEs.It is important to note that, like filing a response with a request to participate in the AFCP 2.0, filing a response with a P3 request does not toll the six month statutory response period. Unless the application is allowed as a result of the P3 panel decision, an applicant must still file an RCE or Notice of Appeal before the six month due date in order to avoid abandonment. P3 requests will be accepted beginning July 11, 2016, and require no fee to request consideration. Reissue, design, and plant applications, as well as reexamination proceedings, are not eligible for P3 participation.
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