Author: Michelle Pacholec Ph.D.
Editor: Stephanie M. Sanders
During its August 9th Patent Quality Chat, the USPTO delved into the details of the Post-Prosecution Pilot Program (P3) and provided some insights that were not included in its July 2016 Federal Register Notice announcing the program. As we previously highlighted, the P3 program is a new after final program that offers applicants another avenue for requesting reconsideration after a final rejection. The P3 program combines some of the features of the current After Final Consideration Pilot Program (AFCP 2.0) and Pre-Appeal Brief Conference Pilot Program.
Applicants should take note that there is a limit on the program, which is currently set to run until January 12, 2017 or until 1,600 requests have been accepted, whichever comes first. Furthermore, each individual technology center will grant no more than 200 P3 requests. Applicants should be sure to check the P3 request Counter by Technology Center before preparing and submitting a P3 request.
As of August 8, 2016, the Office has received 168 proper P3 requests. Technology Center 3700 leads the tally with 37 requests, while Technology Center 1600 has received only seven. The Office indicated that it has already held a number of P3 panel conferences, with mixed results; however, detailed statistics are not yet available.
The requirements for participation in the program are set forth in our previous post and on the Office’s Post-Prosecution Pilot webpage. Unlike AFCP 2.0, if an applicant meets the stated requirements, an Examiner must consider a proper request under the P3 program regardless of whether the Examiner believes that considering the response, updating the search, participating in the P3 panel conference, and completing the Notice of Decision form will take more than the three hours (or four if the request includes proposed amendments) of “other time” allotted for these tasks.
After a proper P3 request is received, the Examiner will contact the applicant (generally within 1-2 weeks) to schedule the P3 panel conference. The Office expects applicants to be available for the conference within 10 days of the Examiner’s initial contact. During the panel conference, applicants are afforded 20 minutes to present their arguments, using any materials (which will be made part of the record). Applicants may conduct the conference via telephone, USPTO-initiated Webex, or in-person at the USPTO headquarters or in any regional office.
The P3 panel will consist of the Examiner of Record, that Examiner’s supervisor, and another primary examiner. The panel will meet prior to the conference in order to provide the neutral primary examiner with a background of the case. Following the conference, the panel will issue a Notice of Decision, which either upholds the final rejection, allows the application, or reopens prosecution. In contrast to the Pre-Appeal Brief Conference Pilot Program, if the final rejection is upheld, a written explanation of the panel decision is communicated along with the status of any proposed amendments. Although there is no official guidance on how detailed this explanation may be, the Office suggested that it might be similar to an Examiner interview summary form. The Office also plans to provide applicants with a survey form about the P3 program along with the Notice of Decision. Examiners who handle P3 requests will also be asked to provide feedback on the program.
Applicants should also be aware that although P3 combines features of AFCP 2.0 and Pre-Appeal Brief Conference Pilot Program, both these programs remain in place and applicants are only permitted to request participation in one program in response to a single final rejection.
More information about P3, as well as the P3 Counter by Technology Center, is available at http://www.uspto.gov/patent/initiatives/post-prosecution-pilot.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.