USPTO Offers New Pilot Program for After Final ResponsesAugust 26, 2016

The USPTO has implemented the “Post-Prosecution Pilot”referred to as the “P3 Program.”The goal of the program is to reduce the need for appeals by providing a more robust after final, pre-appeal program. The P3 Program essentially blends two existing programs: the After Final Consideration Pilot and the Pre-Appeal Brief Conference Pilot. The After Final Consideration Pilot allows an applicant to file an amendment that is narrowing to at least one independent claim and which does not broaden the other claims. Examiners are then provided additional time to review the after final submission and must have a telephonic interview if the submission is not allowable. The Pre-Appeal Brief Conference Pilot allows an applicant to file a 5 page brief (single spaced) addressing errors in prosecution in hopes of avoiding the delay and expense of a full appeal. The Pre-Appeal Brief Conference is filed with a Notice of Appeal. A panel of three examiners, including the prosecuting Examiner, then review the brief and make a decision regarding the status of the rejections of record. If the rejections are maintained the applicant can then continue with an appeal or reopen prosecution by filing a Request for Continued Examination.

The new P3 Program effectively combines these programs by permitting the applicant to file a response to a Final Rejection by the two-month deadline and prior to filing a notice of appeal. The applicant is not required to make an amendment, but is prohibited from making broadening amendments. Thus, non-narrowing amendments are permitted under the program. The response is limited to 5 pages (single spaced) argument. Subsequently, the Office will schedule a conference for a 20 minute oral presentation by the applicant. The oral presentation can be in person at the USPTO or a satellite office, telephonic, or via an online video conference program. The panel will then issue a written decision subsequent to the oral presentation. There is government fee for filing under the P3 program. The program is tentatively scheduled to run until January 11, 2017 or until 1600 requests are received (no more than 200 per art unit).

If the pilot is successful, it is likely that the USPTO will continue it. More information about the program as well as a counter by technology center is available here.