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USPTO Post-Prosecution Pilot Program (“P3”): Limited Availability for New Cost-Effective Review after Final Rejection

Wednesday, July 27, 2016

Recently, the United States Patent and Trademark Office (USPTO) announced a new pilot program for review of applications after the issuance of a Final Rejection.

The Post-Prosecution Pilot Program (“P3”) allows for an Applicant to seek review of a Final Rejection by a panel of Examiners. The P3 Program is expected to function similarly to a Pre-Appeal Conference, however, it appears there will be a number of advantages to using the new program that may result in an improved success rate for Applicants. More specifically, some of these advantages include:
• During a P3 conference, the Applicant is provided with 20 minutes to verbally present to a three-examiner panel (either in-person, by telephone, or via video conference);

• The Applicant may use presentation materials during the P3 conference, not counted against the five-page limit on arguments; and

• The Applicant may optionally include a proposed non-broadening amendment for the three-examiner panel to review.

Unlike a Pre-Appeal Conference, a Notice of Appeal and the required fee do not need to be filed in order to request a review under the P3 Program. In fact, there are no additional government fees for requesting a review under the P3 Program. However, it should be noted that if the Final Rejection is upheld or the request for review under the P3 Program is denied, the request will be treated similarly to an After-Final Response and will not toll the statutory period for replying to the Office Action.

In order to obtain a review under the P3 Program, at least one independent claim must be under final rejection and a request must be made within two months of the Final Office Action. The P3 request is limited to five pages of arguments, including any affidavits. Proposed claim amendments do not count toward the page limit, but, should not necessitate an extensive additional search. Although the Applicant is allowed to use as many pages of exhibits as desired during the oral presentation, any such materials provided or shown to the panel will be entered into the record.

The P3 program should prove to be a cost-effective tool to obtain a more thorough consideration of arguments and amendments before contemplating whether to file a Request for Continued Examination or to pursue an Appeal. However, time is limited to obtain P3 review. Specifically, the USPTO will close the program once it has accepted 1600 compliant requests, and the program will close with respect to an individual technology center once that center has accepted 200 compliant requests. Further, unless extended, the P3 program end on January 12, 2017.

Accordingly, throughout the duration of the P3 Program, when we review a Final Office Action, we may recommend to our clients the filing of a P3 request for review if the case is deemed appropriate for the new program. If use of the P3 Program is desired, it is imperative that we receive your prompt instructions to proceed due to the above-stated time constraints.

Please do not hesitate to contact your Webb attorney if you have any questions regarding the P3 Program or if you would like additional information regarding the potential risks and rewards of requesting review under the P3 Program in a particular case.