Post-Prosecution Pilot Program: File Yours While You Still Can

| Brenden S. Gingrich, Ph.D.

During its August Patent Quality Chat, the USPTO discussed the recently launched Patent Prosecution Pilot Program (P3). The P3 program is a hybrid of the After-final Consideration Pilot (AFCP 2.0), which has been available since 2013, and Pre-Appeal Brief Conference Pilot Program, which has been available since 2005. It is intended to offer applicants an alternative avenue to request reconsideration of a final Office Action without filing a RCE or an appeal before PTAB.  However, the program only runs for four more months, and there are a limited number requests available for Technology Center 1600, so you need to act soon.

The P3 program has several new features that are not available in either the AFCP 2.0 or the Pre-Appeal program. For example, applicant can give a 20 minute presentation to a panel of three Examiners prior to panel discussion, and the panel will provide a Notice of Decision, which will include a written explanation of the panel decision. If an applicant has already used either the Pre-Appeal program or AFCP 2.0 in response to a pending final Office Action, the P3 program cannot be used. However, if a new final Office Action is issued later in prosecution (e.g., after the filing of a RCE), the P3 program is available. Below is a chart summarizing the features of the USPTO’s three after final programs.

  Post-Prosecution Pilot Program (P3) After-Final Consideration Pilot (AFCP 2.0) Pre-Appeal Brief Conference Pilot Program
Participation Restrictions Expire on January 12, 2017 or upon receipt of 1,600 proper requests (up to 200 per technology center) Unlimited;
Program was extended through September 30, 2016
No expiration date
Timing of Request File within 2 months of final rejection and before filing a Notice of Appeal File within six months of final rejection. File with Notice of Appeal and within six months of final rejection.
Procedural Requirements Post-Prosecution Pilot Program (P3) Request Form (Form PTO/SB/444) Certification and Request for Consideration Under the AFCP 2.0 (Form PTO/SB/434) Pre-Appeal Brief Request for Review (Form PTO/AIA/33) and Notice of Appeal under 37 CFR § 41.31
Argument Response under 37 CFR § 1.116, with no more than five pages of argument Response under 37 CFR § 1.116 Pre-Appeal Brief, with no more than five pages of argument
Claim Amendments Optional non-broadening amendment Non-broadening amendment to at least one independent claim Not allowed
Reviewer Panel of Examiners, with 20 minutes of applicant presentation before panel discussion Examiner of Record Panel of Examiners
Decision Notice of Decision with a brief written summary AFCP Response Form Panel Decision, without explanation

The P3 request must be filed within two months of the mailing date of an outstanding final Office Action and before filing a Notice of Appeal. There is no fee required to request consideration under the P3. After a proper P3 request is received, the Examiner will contact the applicant (generally within 1-2 weeks) to schedule the P3 panel conference. The Office expects applicants to be available for the conference within 10 days of the Examiner’s initial contact. During the panel conference, applicants have 20 minutes to present their arguments. Applicants may conduct the conference via telephone, USPTO-initiated Webex, or in-person at the USPTO headquarters or in any regional office.  The Office will issue a decision with one of three possible outcomes: Final Rejection Upheld; Allowable Application; or, Reopen Prosecution.  Unlike the Pre-Appeal Brief Conference Program, the Office will provide an explanation for the decision, which could be valuable to the Applicant in preparing future responses or an appeal brief.

The P3 program provides an opportunity for applicants to get a patent application allowed prior to pursuing a RCE or an appeal.  When timing permits, the P3 program appears to be preferable over the Pre-Appeal program and AFCP 2.0 because, as noted above, it allows applicants to present written and oral arguments and an optional non-broadening claim amendment to a panel of examiners, and the Office provides an explanation for its decision.

But the P3 program will only run six months, until January 11, 2017, or until 1600 compliant requests have been accepted, whichever occurs first. Each individual technology center will grant no more than 200 requests. As of September 7, 2016, less than two months into the program, the Office has already received over 490 compliant P3 requests, and the Technology Center 1600 for Biotechnology and Organic Chemistry has received 32 compliant requests.  Applicants should check the P3 request Counter by Technology Center before preparing and submitting a P3 request. 

More information about the program can be found at, and the Office’s August Patent Quality Chat presentation can be found here