USPTO Adds New Pilot Initiative That Could Help Move Pending Cases Through More Quickly – Combines Features of Pre-Appeal Conference & After-Final 2.0 Program

On July 11, the USPTO unveiled its Post-Prosecution Pilot Program (“P3”), which is scheduled to remain in effect until January 12, 2017, or until the number of P3 requests exceeds 1600, whichever occurs first.

Designed to reduce the number of appeals and the number of Requests for Continued Examination, the P3 incorporates features from existing pilot programs and adds new features.

The P3 provides for

  1. after-final responses to be considered by a panel of examiners (a feature carried over from the Pre-Appeal Brief Conference Pilot Program),
  2. optional proposed amendments (a feature carried over from the After Final Consideration Pilot Program 2.0), and
  3. an opportunity for the applicant to make an oral presentation to the panel of examiners (new feature).

To participate in the P3, an application must contain an outstanding final rejection. Additionally, P3 requests, which must be filed within two months from the mailing date of a final rejection and prior to filing a notice of appeal, must include

  1. a transmittal form, such as PTO/SB/444, identifying the submission as a P3 submission;
  2. a response under 37 CFR 1.116 comprising no more than 5 pages of argument; and
  3. a statement that the applicant is willing and available to participate in the conference with the panel of examiners.

The oral presentation, which will be limited to 20 minutes, may be given in person, by telephone, or by a video conferencing tool set up by the USPTO.

The P3 request may optionally include proposed non-broadening amendments. Applications in which requests to participate in the Pre-Appeal program or AFCP 2.0 have been submitted in response to the same outstanding final rejection are not eligible for the P3.

Presently, no fee is required to request consideration under the P3. If a P3 request is granted and a panel is convened, the panel decision will be communicated in the form of a brief written summary.

Since the new program is capped at 1600 requests, it may be beneficial to review cases with final rejections not older than 2 months and consider filing a P3 request.


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