New USPTO “P3” Pilot Program

September 2016

By: Nicole A. Palmer

The United States Patent and Trademark Office (USPTO) initiated the Post-Prosecution Pilot Program (P3) on July 11, 2016. This program is intended to combine features from the ongoing Pre-Appeal Pilot and After-Final Consideration Pilot 2.0 programs into a single offering, with additional features for enhanced applicant participation.

Under the P3, a panel of examiners (including the examiner of record) experienced in the relevant field of technology will hold a conference with the applicant to review an after-final submission. A request for participation must be made within two months of the mailing date of a final rejection and prior to the filing of a notice of appeal. The submission must include a transmittal form together with a response to the outstanding final rejection (limited to no more than five pages of argument), and a statement that the applicant is willing and available to participate in a conference. A proposed non-broadening claim amendment may also be presented therein for discussion. According to the USPTO announcement, “[a] proposed amendment that focuses the issues with respect to a single independent claim is the type of proposed amendment that provides the best opportunity for leading to the application being placed into condition for allowance.”

Upon verification that a P3 request is timely and compliant, the USPTO will contact the applicant and the conference should be scheduled within ten calendar days thereafter. The applicant’s participation in the conference will be limited to 20 minutes. Any materials presented during the conference will be placed in the file. A Notice of Decision from P3 Conference will be issued. The final rejection may be upheld (not petitionable but appealable) or reversed (Notice of Allowance mailed concurrently), or prosecution may be reopened (prior rejections withdrawn and a new Office Action to be issued). Proposed amendments from the panel may accompany the Notice of Decision to facilitate prosecution.

There is no associated fee for participation in this pilot program. The filing of a P3 request does not toll the statutory deadline for replying to the final rejection.

The goals of the P3 are to increase the value of after-final practice, reduce the number of appeals (and issues appealed) as well as the number of Requests for Continued Examination (RCEs), and to streamline the options available to applicants during after-final practice.