USPTO Introduces Enhanced After Final Procedure

On July 11, 2016, the U.S. Patent and Trademark Office (USPTO) initiated the Post-Prosecution Pilot (P3) Program. Under the P3 Program, applicants can request a panel of examiners to participate in a conference with the applicant to review a response to a final rejection. The stated purpose of the P3 Program is to reduce the number of appeals and issues to be taken up on appeal to the Patent Trial and Appeal Board, to decrease the number of Requests for Continued Examination filed and to simplify the after final landscape.

The P3 Program is available to utility applications and is initiated by the filing of a Certification and Request for Consideration under the Post-Prosecution Pilot Program (P3) (Form PTO/SB/444) and a response to the final rejection. No fee is required.

Requests must include a statement that the applicant is willing and available to participate in a P3 Program conference with the panel of examiners. The response may include no more than five pages of arguments, exclusive of any amendments. Arguments presented in the response are limited to appealable and non-petitionable matter. An optional proposed non-broadening amendment to at least one of the claims can be made.

The P3 Program request and response must be filed within two months from the mailing date of the final rejection.

To be eligible to participate in the P3 Program, an applicant cannot have previously filed a request to participate in the pre-appeal program or an After Final Consideration Pilot Program Request in response to the same final rejection. A P3 Program request will be withdrawn without a decision on the merits upon the filing of a Notice of Appeal, a Request for Continued Examination or an express abandonment.

Once the USPTO verifies that the P3 Program request is timely and compliant, the USPTO will contact the applicant to schedule a conference. The applicant may participate in the conference in person, by telephone or by video. The applicant's participation in the conference is limited to 20 minutes.

The applicant will be informed of the panel's decision in writing via a mailing of a Notice of Decision from Post-Prosecution Pilot Conference. The Decision will indicate that the final rejection is upheld, the application is allowed or prosecution is reopened.

The P3 Program runs until January 12, 2017, or the date the USPTO accepts a total of 1,600 requests to participate in the P3 Program, whichever comes first. Each Technology Center (TC) will accept no more than 200 requests.

For more information on the P3 Program, please visit the USPTO website here.