USPTO Implements Post-Prosecution Pilot Program

by Wilson Sonsini Goodrich & Rosati
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On July 11, 2016, the United States Patent and Trademark Office (USPTO) published a notice detailing the initiation of the Post-Prosecution Pilot Program (P3). As implemented, the P3 provides an additional path forward for applicants during the period after a final rejection but before the filing of a notice of appeal. The initiation of the P3 is an important development with potential implications for patent prosecution in the USPTO.

Overview

Under the P3, a panel of examiners, including the examiner of record, will hold a conference with the applicant to review the applicant's response to a final rejection of record. During the conference, an applicant will be permitted to make an oral presentation to the panel of examiners; however, the applicant's participation will be limited to 20 minutes. Following the conference, the panel's decision will be communicated in the form of a brief written summary. The notice of decision will indicate one of the following: (a) final rejection upheld; (b) allowable application; or (c) reopen prosecution.

In its current iteration, there is no fee required to request consideration under the P3. Only one P3 request will be accepted in response to an outstanding final rejection. However, if prosecution is reopened and the USPTO subsequently issues a new final rejection, the filing of a P3 request in response to the new final rejection is permitted.

Importantly, the P3 has a limited duration. The P3 will accept requests beginning July 11, 2016, until either January 12, 2017, or the date the USPTO accepts a total (collectively across all technology centers) of 1,600 compliant requests to participate under the P3, whichever occurs first. Each individual technology center will accept no more than 200 compliant requests.

P3 Eligibility Requirements

The USPTO has set forth the following P3 eligibility criteria:

  • An application must contain an outstanding final rejection and be one of the following:
    • An original utility non-provisional application filed under 35 U.S.C. 111(a)
    • An international utility application that has entered the national stage in compliance with 35 U.S.C. 371
    • Continuing applications (e.g., a continuation or divisional application) are eligible to participate in the P3
    • Reissue, design, and plant applications, as well as reexamination proceedings, are not eligible to participate in the P3
  • An applicant cannot have previously filed any one of:
    • A proper request to participate in the Pre-Appeal program
    • A proper request under After Final Consideration Pilot (AFCP) 2.0 in response to the same outstanding final rejection

P3 Procedural Requirements

If the above listed P3 eligibility requirements are satisfied, to participate in the P3, an applicant must file a request for consideration under the P3 within two months from the mailing date of a final rejection and prior to filing a notice of appeal, together with a response to the final rejection and a statement that the applicant is willing and available to participate in the conference. All papers associated with a P3 request must be filed via the USPTO's Electronic Filing System-Web (EFS-Web).

For a request for a response under 37 CFR 1.116 to be considered under the P3, the response must include:

  • a transmittal form, such as form PTO/SB/444, that identifies the submission as a P3 submission and requests consideration under the P3;
  • a response under 37 CFR 1.116 comprising no more than five pages of argument; and
  • a statement that the applicant is willing and available to participate in the conference with the panel of examiners.

With regard to the response under 37 CFR 1.116, where claim amendments are presented, they may not broaden the scope of a claim in any aspect. In reference to the five-page limit, applicants may refer to an argument already of record rather than repeat the argument. Affidavit or other evidence will count toward the five-page limit. However, the following documents do not count toward the five-page limit disclosed above:

  • Sheet(s) of the response containing a proposed amendment
  • A page of the response that consists solely of, for example, a signature
  • A transmittal form not including arguments

P3 and a Timely Request

If a P3 request is deemed timely and compliant, the USPTO will contact the applicant to schedule a conference. If within 10 calendar days from the date the USPTO first contacts the applicant the USPTO and the applicant are unable to agree on a time to hold the conference, or the applicant declines to participate in the conference, the request will be deemed improper.

Actions That Will Terminate a P3

If an applicant files any of the following after the date of filing a P3 request, but prior to a notice of decision from the panel of examiners, the processing of the P3 request will end without a decision on the merits of the P3 request:

  • A notice of appeal
  • A Request for Continued Examination (RCE)
  • An express abandonment under 37 CFR 1.138
  • A request for the declaration of interference
  • A petition requesting the institution of a derivation proceeding

The P3 Conference

The applicant may participate in the conference in person, by telephone, or by a video-conferencing tool set up by the USPTO, such as WebEx. During the conference, the applicant's participation will be limited to 20 minutes and the applicant will be permitted to make an oral presentation to the panel of examiners. Following the conference, a decision from the panel may indicate (a) final rejection upheld; (b) allowable application; or (c) reopen prosecution. If the final rejection is upheld, the time period for taking further action in response to the final rejection will expire on (1) the mailing date of the notice of decision; or (2) the date set forth in the final rejection, whichever is later. A decision of final rejection upheld is not petitionable. However, a decision to maintain a final rejection is subject to appeal.

Effects of P3 Filing

It is critical for P3 participants to appreciate that the filing of a P3 request will not toll the six-month statutory period to reply to the final rejection. To avoid abandonment, further action, such as the filing of a notice of appeal or RCE, may be required, unless the applicant receives written notice from the USPTO that the application has been allowed or that prosecution is being reopened. Additionally, once a P3 request has been accepted in response to a final rejection, no additional response under 37 CFR 1.116 to the same final rejection will be entered, unless the examiner has requested the additional response because they agree that it would place the application in condition for allowance.

Additionally, with regard to after-final practices such as the Pre-Appeal program and the AFCP 2.0, once a P3 request is accepted, neither a request to participate in the Pre-Appeal program nor a request for consideration under AFCP 2.0 will be accepted for the same outstanding final rejection.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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