USPTO introduces Post-Prosecution Pilot Program
The United States Patent and Trademark Office (Office) is initiating a Post-Prosecution Pilot Program (P3) to test its impact on enhancing patent practice during the period subsequent to a final rejection and prior to the filing of a notice of appeal. This Pilot Program responds to stakeholder input gathered during public forums held in support of the Enhanced Patent Quality Initiative.
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 the final rejection of record. In order to participate in the P3, the applicant will be required to 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. The applicant will have the option of including in the response a proposed non-broadening amendment to a claim(s).
The Office designed the P3 to increase the value of after final practice by (1) leveraging applicant input obtained through an oral presentation during a conference with a panel of examiners, and (2) also providing written explanation for the panel decision.
The P3 is also designed to reduce the number of appeals and issues to be taken up on appeal to the Patent Trial and Appeal Board (PTAB), and reduce the number of Requests for Continued Examination (RCE), and simplify the after final landscape.
The Post-Prosecution Pilot begins on July 11, 2016, and will run for 6 months or when 1,600 requests have been accepted into the Pilot, whichever comes first. Each individual technology center will accept no more than 200 compliant requests, meaning that the P3 may close with respect to an individual technology center that has accepted 200 compliant requests, even as it continues to run in other technology centers that have yet to accept 200 compliant requests.
The P3 is open to non-provisional and international, utility applications filed under 35 USC 111(a) or 35 USC 371 that are under final rejection. Reissue, design and plant applications, as well as reexamination proceedings, are not eligible to participate in the P3.
The following is required for entry into the pilot:
A Request Form (“Certification and Request for Consideration under the Post-Prosecution Pilot Program (P3)”) filed via EFS-Web within two months of the mailing date of the final rejection and prior to filing a notice of appeal.
A statement [contained within the Request Form] that the applicant is willing and available to participate in a P3 conference with the panel of examiners;
- A response comprising no more than five (5) pages of arguments under 37 CFR 1.116 to the outstanding final rejection, exclusive of any amendments; and
- Optionally, a proposed non-broadening amendment to one or more claim(s).
There is no fee to participate in the P3. Applicant cannot have previously filed a proper request to participate in the Pre-Appeal or the AFCP 2.0 programs in response to the same outstanding final rejection. Once a P3 Request has been accepted, no additional response(s) under 37 CFR 1.116 will be entered, unless requested by the examiner. It is also impermissible to request to participate in the Pre-Appeal program or request consideration under AFCP 2.0 once a P3 request has been accepted.
For more details : http://www.uspto.gov/patent/initiatives/post-prosecution-pilot
