January/February 2017
CIPA Journal
By Anthony C. Tridico, Ph.D.; Jessica L.A. Marks; Erin M. Sommers, Ph.D.
Authored by Jessica L.A. Marks, Erin M. Sommers Ph.D., and Anthony C. Tridico, Ph.D.
As part of its Enhanced Patent Quality Initiative,1 the United States Patent and Trademark Office (USPTO) started the post-Prosecution Pilot (P3) program on 11 July 2016.2 The P3 program provides applicants another option for responding to final office actions, combining the features of two of the USPTO’s other pilot programs: the After Final Consideration Pilot 2.0 (AFCP 2.0) program3 and the Pre-Appeal Brief Conference Pilot (Pre-Appeal) program.4 It is scheduled to end on 11 January 2017, or whenever 1,600 requests (200 in each of the eight USPTO technology centres) are reached. This makes it a relatively short pilot program, unless the USPTO extends it, as it has done with other pilot programs.
The P3 program allows an applicant with a finally rejected utility application to request a 20-minute conference with three examiners: the examiner of record for the application, the supervisory primary examiner (SPE) for the application, and a third primary examiner. During the conference, the applicant can discuss the arguments already in the record with the panel, assisting in the panel’s understanding of the application. The applicant may also present new arguments that were not previously in the record and may propose amendments. As with most dealings with the USPTO, any materials used by the applicant during the oral hearing will be placed in the record.
After the conference, the panel provides written notification as to whether the final rejection is upheld, the application is found allowable, or if prosecution is reopened (because the arguments to the current rejections were persuasive).5 It also notifies the applicant if any proposed amendments were entered during the process. The written notification is simply a form that the panel completes; a detailed explanation of its decision is not provided.6 If the final rejection is upheld, the applicant must take action—e.g., file a Request for Continued Examination (RCE) or file a Notice of Appeal—by the date set forth in the final rejection or by the date of the notice of the panel’s decision (whichever is later). If the panel finds the application allowable, a Notice of Allowance will issue with their decision. If the panel decides that prosecution must be reopened, a new office action withdrawing the prior rejections and presenting the new rejections will be mailed.
The P3 program is free, but it must be requested within two months of the mailing date of the final rejection. The P3 program must also be requested in lieu of the applicant’s other options. A P3 request will not be accepted if the applicant has already requested consideration under the AFCP 2.0 or Pre-Appeal programs. Similarly, once a P3 request is accepted, the applicant cannot subsequently request consideration under the AFCP 2.0 or Pre-Appeal programs. Any response after final arguments or amendments to the claims will not be entered unless requested by the examiner. The application will automatically be withdrawn from the P3 process if the applicant files a notice of appeal or RCE before the panel makes its decision.7
Applicants request the P3 program by filing a P3 request form with certifications that the application meets the P3 requirements and that the applicant is willing and available to participate in the P3 conference with the panel of examiners.8 A five-page response summarizing their arguments must also be submitted with the request. Any proposed amendments must not broaden the claims and, applicants are limited to a single set of amended claims. As long as the request meets the P3 criteria, it will be accepted into the program, and the USPTO will contact the applicant to schedule the conference. The USPTO is supposed to contact the applicants within one or two weeks of fi ling the request, but some applicants have found that the USPTO is not that prompt.9 When the applicant is contacted, however, the conference must be scheduled within ten calendar days or the application may be removed from the program.10
Preliminary anecdotal evidence shows that there are some good aspects of this new pilot program. Unlike a Pre-Appeal conference, which only includes examiners, a P3 conference provides the applicant an opportunity to meet with the panel, which can be beneficial when explaining complicated technologies or legal arguments. Some participants have indicated that the conference resulted in suggested amendments to place the application in condition for allowance. Some have indicated that they were able to move applications past the "logjam situation[s]" experienced during normal prosecution.11
There may also be some drawbacks. Instead of random assignment of an impartial third examiner or quality assurance specialist to the panel, the SPE and the examiner of record mutually agree upon the third examiner.12 Additionally, although the panel is supposed to reach a consensus on the decision, the outcome is a "recommendation to the primary [examiner] of record,"13 and only the examiner of record decides whether any proposed claim amendments are entered.14 Thus, it appears that much of the decision-making power is left to the examiner who initially issued the final rejections.
Furthermore, as a pilot program, some of the kinks still need to be worked out of the system. As explained in a comment submitted to the USPTO about the program, it is unclear whether amendments or additional evidence presented by the applicant during the P3 process must be accompanied by a showing of good and sufficient reasons why they were not presented earlier.15 The P3 instructions refer to 37 CFR 1.116, which requires such a showing, but the remaining P3 instructions do not address it. Moreover, if showing good cause is required, it is unclear whether an applicant can provide the explanation during the panel conference or if it must be part of the written arguments, which are limited to only five pages.
Despite these potential issues, the P3 program has proven popular. In fact, at least two of the eight technology centres have already reached their 200 application maximum and are no longer accepting requests.16 To improve the next iteration of the program, should the USPTO extend it, the USPTO is conducting a survey of applicants who have submitted P3 requests so that it can determine the effectiveness of the program.17 The USPTO is also reviewing the comments submitted in response to the Federal Register notice to the program.18 These efforts indicate that the USPTO may extend this program as they have done with many of their popular pilots.19
1 For more information on the USPTO programs that make up the Enhanced Patent Quality Initiative, see https://www.uspto.gov/patent/initiatives/enhanced-patent-quality-initiative-0.
2 Post-Prosecution Pilot Program, 81 Fed. Reg. 44845 (11 July 2016), available at https://www.gpo.gov/fdsys/pkg/FR-2016-07-11/pdf/2016-16423.pdf.
3 For more information on the AFCP 2.0 program, see Tridico Ph.D., Anthony C., Marks, Jessica L.A., Sommers Ph.D., Erin M., Designed to Streamline, January [2016] CIPA 24, available at http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=085fb0bc-eea2-44df-bbef-940b3998ed35; and Tridico, Anthony C., Ph.D., and Mandy J. Song, Ph.D., Opportunity to Get Your Application Allowed After Final Rejection – Introducing the After Final Consideration Pilot, December [2014] CIPA 673, available at www.finnegan.com/resources/articles/articlesdetail.aspx?news=d9b7b75b-cb17-4490-a624-285c5fd6308d.
4 For more information on the Pre-Appeal program, see https://www.uspto.gov/web/offices/com/sol/og/2005/week28/patbref.htm.
5 USPTO Notice of Decision from Post-Prosecution Pilot Program (P3) Conference, Form PTO-2324, available at https://www.uspto.gov/sites/default/files/documents/PTO-2324%20Notice%20of%20Decision%20from%20P3%20Conference.pdf.
6 USPTO Notice of Decision from Post-Prosecution Pilot Program (P3) Conference, Form PTO-2324, available at https://www.uspto.gov/sites/default/files/documents/PTO-2324%20Notice%20of%20Decision%20from%20P3%20Conference.pdf.
7 The application will also be automatically withdrawn from the P3 program if the applicant expressly abandons the application, requests an interference, or petitions for a derivation proceeding. Post-Prosecution Pilot Program, 81 Fed. Reg. 44845, at 44849 (11 July 2016), available at https://www.gpo.gov/fdsys/pkg/FR-2016-07-11/pdf/2016-16423.pdf.
8 The P3 request form PTO/SB/444 is available at https://www.uspto.gov/sites/default/files/documents/sb0444.pdf.
9 Koba, Wendy, "feedback," 16 Sept 2016, available at https://www.uspto.gov/sites/default/files/documents/p3comments_f_koba_16sep2016.pdf.
10 Post-Prosecution Pilot Program, 81 Fed. Reg. 44845, at 44848 (11 July 2016), available at https://www.gpo.gov/fdsys/pkg/FR-2016-07-11/pdf/2016-16423.pdf.
11 Koba, Wendy, "feedback," 16 September 2016, available at https://www.uspto.gov/sites/default/files/documents/p3comments_f_koba_16sep2016.pdf.
12 USPTO Post-Prosecution Pilot (P3) PTC Examiner Training 2016, at slide 11, available at https://www.uspto.gov/sites/default/files/documents/post-prosecution-pilot-training.pdf.
13 USPTO Post-Prosecution Pilot (P3) PTC Examiner Training 2016, at slide 16, available at https://www.uspto.gov/sites/default/files/documents/post-prosecution-pilot-training.pdf.
14 Post-Prosecution Pilot Program, 81 Fed. Reg. 44845, at 44848, available at https://www.gpo.gov/fdsys/pkg/FR-2016-07-11/pdf/2016-16423.pdf.
15 Neifeld, Rick, "Comments regarding the Post-Prosecution Pilot Program (P3 Program)," 9 July 2016, available at https://www.uspto.gov/sites/default/files/documents/p3comments_f_rneifeld_09jul2016.pdf.
16 USPTO Post-Prosecution Pilot, available at https://www.uspto.gov/patent/initiatives/post-prosecution-pilot (indicating that as of 28 October 2016, Technology Centers 3600 and 3700 had already reached 200 requests).
17 Post Prosecution Pilot External [Survey], available at https://www.surveymonkey.com/r/Post_Prosecution_Pilot_External.
18 See Comments on the Post-Prosecution Pilot Program, available at https://www.uspto.gov/patent/laws-and-regulations/comments-public/comments-post-prosecution-pilot-program (posting the comments submitted in response to the Federal Register Notice).
19 See, e.g., USPTO OG Notices: 7 February 2006, available at https://www.uspto.gov/web/offices/com/sol/og/2006/week06/patexcf.htm (extending the Pre-Appeal program); USPTO After Final Consideration Pilot 2.0 webpage, available at https://www.uspto.gov/patent/initiatives/after-final-consideration-pilot-20 (noting that the program "has been extended through 30 September 2017).
Originally printed in CIPA Journal in January/February 2017. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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