Post-Prosecution Pilot (P3) Program, A New Strategy for Responding to a Final Rejection of a Patent Application

It is common for a U.S. patent application to see a Final Office Action during the course of its examination at the United States Patent and Trademark Office (“USPTO”).  Most patent applications receive a first Non-Final Office Action rejecting one or more claims.  As a matter of right, an applicant may submit arguments and freely amend the claims to advance the application toward allowance.  However, when the response does not result in allowance, in most cases a Final Office Action is issued, and prosecution is officially closed.

A Final Office is not the end of things, as there are a number of procedures for further discussing the application with the Examiner handling the application, getting other USPTO employees to consider the issues, or reopening prosecution (possibly resulting in another Non-Final Office Action).  Unfortunately, many of these procedures have substantial USPTO fees attached to them, may introduce significant delays, or fail to offer much guidance to applicants when they do not succeed.

The USPTO recently made a new avenue available – for a limited time – for addressing Final Office Actions: the Post- Prosecution Pilot (P3) Program.  The P3 Program draws from aspects of two other programs introduced over the last few years to offer more efficient routes between a Final Office Action and allowance: the After Final Consideration Pilot (AFCP), and the Pre-Appeal Brief Conference Pilot Program.  Further, the P3 Program has a significant new feature previously only available in the somewhat expensive, burdensome, and slow appeal process: an opportunity for an applicant to make an oral presentation in support of their position.

The P3 Program began on July 11th, 2016 and will continue for 6 months or until 1,600 requests have been accepted into the Pilot. Each of the eight individual technology centers will accept no more than 200 compliant requests. This Pilot is open to non-provisional and international utility applications filed under 35 USC 111(a) or 35 USC 371 that are finally rejected.

To enter the P3 Program, one must file the followings within two months of a Final Office Action and before filing a notice of appeal:

• the appropriate request form;
• a statement that the applicant is willing and available to participate in a P3 conference; and
• arguments in response to the Final Office Action that complies with 37 CFR 1.116 for after-final responses (maximum five page response, not including any proposed amendments).

To enter the P3 Program, an applicant cannot have previously filed a request to participate in the Pre-Appeal Brief or the AFCP programs in response to the same final rejection, and an applicant cannot request to participate in the Pre-Appeal Brief or the AFCP programs once a P3 request has been accepted. There is no USPTO fee to participate in the P3 Program, and once a request has been accepted, no additional responses will be entered unless requested by the examiner.

All P3 requests will be considered for timeliness and compliance before entry into the pilot. If a request is considered untimely or non-compliant, the USPTO will treat it in the same manner as any after final response absent the P3 request — no additional examiners will be involved and no conference will be held. The USPTO will then communicate why the P3 request was found to be untimely or non-compliant, the result of the treatment under 37 CFR 1.116 of the response, and the time period to take further action. If the request is considered timely and compliant, then the USPTO will enter the application into the pilot process.

Overview of the Pilot Process: the applicant will be contacted to schedule the P3 conference, which will most likely be scheduled within ten calendar days of the initial contact with the applicant. At the conference, the applicant will make an oral presentation (maximum of 20 minutes) to a panel of two or three examiners. In this presentation, any materials that are used will be placed in the public record of examination, the applicant is limited to appealable matters, and the applicant may present arguments directed to the record or the patentability of the amended claims. The P3 process will be terminated if an applicant files, a notice of appeal, a request for continued examination (RCE), an express abandonment of the application, a request for a declaration of interference, or a petition requesting the institution of a derivation proceeding, after the filing of the P3 request but before a notice of decision from the panel.

A notice of decision will be delivered in writing. The decision may be that the final rejection was upheld, that it was an allowable application or to reopen prosecution (the rejections are withdrawn and the application reconsidered, which may result in a new Office Action).  In the event that the final rejection is upheld, a short summary of the reasons is provided, which improves upon the Pre-Appeal Brief process, where such decisions are not explained.