USPTO Creates New Alternative For Responding to Final Rejections

The new Post-Prosecution Pilot ("P3") program provides a pathway for patent applicants to make an in-person presentation to a panel of patent examiners as an alternative to existing options for responding to final rejections. Importantly, the USPTO will limit enrollment in the new P3 program to only 1600 participants, a small fraction of the hundreds of thousands of applicants who receive final rejections each year, so the window of opportunity for participation may be short. However, the benefits are expected to be significant, particularly for situations in which prosecution momentum has stalled.

The P3 program was announced in a Federal Register Notice published on July 11, 2016. The USPTO describes P3 as combining desirable features of two existing post-prosecution programs, known as Pre-Appeal and AFCP 2.0. Like the Pre-Appeal program, P3 will allow for consideration of an after-final response by a panel of three examiners (typically including a supervisor). Like AFCP 2.0, the after-final response can optionally include an amendment. The most significant feature of P3, however, is the opportunity to make a 20 minute presentation to the panel of examiners, which may be in-person or remote (phone or video), and can include exhibits or slides. The panel will issue a notice of decision after the presentation. In the event of allowance, it will be accompanied by a Notice of Allowance, but in the event the rejection is upheld, the decision will include a short summary of reasons for maintaining the rejection. Applicants who have reached an impasse with an examiner are expected to be the biggest beneficiaries of P3, particularly when the technology is conducive to direct explanation.

There is no USPTO fee for P3 participation and the requirements are straightforward:

• Outstanding final rejection (no notice of appeal, AFCP 2.0 or RCE filed)
• Filing of a request for P3 participation within two months of mailing of final rejection
• Filing of a response to the final rejection that includes no more than five pages of arguments and, optionally, a proposed non-broadening claim amendment
• Filing of a statement that applicant is willing and available to participate in a conference with the panel of examiners
• Participation in the conference

The Federal Register Notice provides additional details regarding P3. We encourage you to consider P3 and to call us if you have any questions.