On July 11, 2016, the US Patent and Trademark Office (PTO) announced a new pilot program to enhance after final practice. The Post-Prosecution Pilot Program (P3) combines elements of the Pre-Appeal Request for Review and AFCP 2.0 After Final Consideration Pilot, and is designed to reduce the number of appeals and issues to be taken up on appeal to the Patent Trial and Appeal Board (PTAB or Board), and to reduce the number of Requests for Continued Examination.
To participate in the P3 program, an applicant must submit an original utility non-provisional application filed under 35 USC § 111(a) or a national phase application filed under 35 USC § 371 containing an open final rejection. The P3 request is limited to five pages of arguments regarding appealable matters and must include a transmittal form identifying the submission as a P3 submission as well as a statement that the applicant is willing and available to participate in a conference with a panel of examiners. There is no fee for the P3 request, and the request must be filed electronically via the PTO’s EFS-Web within two months from the mailing date of the final rejection. Once a P3 request is accepted, no further responses under 37 CFR § 1.116 will be entered for the same final rejection unless the additional response was requested by the examiner to place the application in condition for allowance.
A P3 request may be accompanied by a proposed amendment to one or more claim. Entry of the amendment is governed by Rule 116, and the proposed amendment may not broaden the scope of a claim in any aspect. The amended claims section of the P3 does not count towards the five-page argument limit.
After the PTO verifies the P3 request as timely and compliant, the PTO will contact the applicant to schedule the examiner conference. During the conference, the applicant will present arguments in support of patentability to a panel of examiners in a manner similar to an ex parte appeal before the PTAB. An applicant’s participation in the conference is limited to 20 minutes. The conference can be done in person, by telephone or via a video conference, such as a WebEx® conference. If the office and the applicant are unable to agree on a time to hold the conference within 10 calendar days from the date the PTO first contacts the applicant, or if the applicant declines to participate in the conference, the P3 request will be deemed improper and treated as an after final response under Rule 116.
The PTO will accept P3 requests until either January 12, 2017, or whenever the PTO accepts a total of 1,600 compliant requests, whichever comes first. Each technology center is limited to 200 compliant requests, which means that the P3 program may end in one technology center while continuing to accept requests in another technology center. The PTO is seeking comments on the P3 program, which may be submitted by email to afterfinalpractice@uspto.gov by November 14, 2016.
