USPTO Unveils New After-Final, Pre-Appeal Pilot Program

Zachary S. Pratt, Shumaker & Sieffert, P.A.

On July 11, 2016, the United States Patent and Trademark Office (USPTO) released information regarding a new avenue for After-Final patent prosecution.  This program, named the Post-Prosecution Pilot Program, or P3 for short, combines multiple After-Final procedures to produce a useful route for patent seekers who want to advance prosecution but may not want to immediately incur the costs of a Request for Continued Examination (RCE) or the delay associated with awaiting a decision on appeal.  In general, the P3 process allows the Applicant to submit remarks and/or limiting amendments to a panel of patent examiners (including the examiner of record), combining the Pre-Appeal process with the current After-Final Consideration Pilot Program 2.0.  The P3 Program further allows the Applicant or the Applicant’s representatives to participate in a 20-minute oral conference in front of the panel, which is a new feature specific only to the P3 Program. The specific P3 Program requirements are outlined below:

1.Timing and Eligibility Requirements

Any application (original utility, continuation, or divisional application) filed under 35 U.S.C. § 111() or international utility application that has entered the national stage in compliance with 35 U.S.C. § 371 may enter the P3 process, so long as a Final Office Action has issued, a response to the Final Office Action has not yet been filed, and the Final Office Action was mailed no more than two months prior to the filing of the request.

2.Transmittal Form

A new transmittal form has been developed by the USPTO for accompanying P3 responses.  The transmittal form (PTO/SB/444) can be found here

3.Written Response Under 37 CFR 1.116

A P3 Program response allows the Applicant to submit remarks in response to the Final Office Action.  As with the Pre-Appeal Brief, the response is limited to five pages (not counting the transmittal form or proposed claim amendments).  However, since amendments may be proposed under the P3 program, the remarks may address the Final Office Action as it applies to the newly amended claims.

4.Conference Participation Statement

The response must further include a statement that the Applicant is willing and able to participate in a 20-minute oral conference with the panel of examiners.  An example statement may read “Applicant respectfully requests that the attached response be examined under the Post-Prosecution Pilot Program.  Applicant is willing and available to participate in an oral conference under the Post-Prosecution Pilot Program.”  The Applicant, or the Applicant’s representatives, may participate in this conference in-person, via telephone, or by a video conferencing tool set up by the USPTO (e.g., WebEx®).  Notably, this statement is conveniently included in the PTO/SB/444 form.

5.Option to Propose Amendment

Although not necessary, the P3 Program further allows the Applicant to propose amendments to the claims, so long as the proposed amendments do not broaden the scope of the claim.  Analysis of the proposed amendments for broadening will be performed under section 1412.03 of the MPEP, which is the analysis performed under the AFCP Program 2.0.  Further, extensive amendments may not be fully considered, as the examiners are limited in the amount of time that they may dedicate to a P3 Program response.

6.After Filing

When the USPTO receives the P3 Program response, the relevant technology center will first review all of the submissions to determine whether the response is timely, complete, and compliant with the requirements provided above.  If the request is timely and compliant, a panel will gather to examine the merit of the submissions.  The panel will concurrently contact the Applicant to schedule the 20-minute oral conference.  All materials used by the Applicant during the conference, such as slideshows or exhibits, will be placed in the file.  After the conference, the Applicant will be notified of the decision. 

If the Final Office Action is upheld, the USPTO will notify the Applicant whether the amendments presented in the P3 Program response are entered or not entered.  The Applicant may then utilize established methods to continue prosecution (i.e., RCE, Appeal, Continuation, or Divisional).  It should be noted that the six-month date for responding to the Final Office Action is not tolled by filing a P3 Program response.  As such, to avoid abandonment, additional action must be taken either on the day that the decision is received or on the original six-month date, whichever is later.

If the rejections in the Final Office Action are withdrawn and the USPTO finds the application allowable, the decision will be mailed concurrently with a Notice of Allowance that states the rejections are withdrawn.

Finally, if prosecution is reopened, the decision will state that the current rejections are withdrawn and that a new Office Action will be mailed.  The decision will also state that no further action is needed on the part of the Applicant.

The P3 Program response will be terminated if the Applicant files an RCE, a Notice of Appeal, or an Express Abandonment prior to the decision being mailed.  If the P3 Program response is terminated in this manner, no decision on the merits of the submission will be issued.

7.Final Tidbits

While the P3 Program may combine the AFCP Program 2.0 and the Pre-Appeal process, both forms of prosecution are still available to the Applicant while the P3 Program is in effect.  Also, although a response may be timely and compliant, the USPTO may reject a request to participate in the P3 Program for some other limited reasons.  Specifically, if a technology center has reached 200 compliant requests accepted or a specific examiner has an excessive workload due to P3 Program requests, the USPTO may treat the filing as if it was filed under the AFCP Program 2.0 and deny the Applicant a conference.

Overall, the P3 Program seems to provide a useful course of action for Applicants seeking an alternative to established After-final procedures.  The USPTO has stated that this program is instated immediately and will continue until January 12, 2017, or until the USPTO has received 1600 requests, whichever comes first.  While there are sure to be some growing pains, the P3 Program provides a valuable opportunity to hold oral conversations and present amendments and remarks to new sets of eyes.  This alone may help overcome outstanding rejections, or at least provide valuable guidance for how to proceed toward an ultimate allowance.  Both have the potential to result in an overall win for Applicants who take advantage of this new program.