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New USPTO Post-Prosecution Pilot Program

Dear Colleagues, 

We report that on July 11, 2016, the United States Patent & Trademark Office (PTO) announced a new pilot program for applications that have received a final rejection, entitled the “Post-Prosecution Pilot Program” (P3 program).  The P3 program promotes the PTO’s ongoing initiative to enhance patent quality by providing applicants with a new tool to respond to a final rejection. The PTO has likened the new P3 program as a hybrid of the After-Final Consideration Pilot (AFCP 2.0) Program and the Pre-Appeal Brief Conference Pilot Program, which ultimately combines the effective features of both programs. While the AFCP 2.0 and Pre-Appeal Brief Conference Pilot Programs are still available to applicants, the P3 program provides another avenue for requesting reconsideration of a final rejection before filing an RCE or commencing with an appeal to the PTAB.

Under the P3 program, a panel of three (3) patent examiners, including the examiner of record, will hold a conference to review the applicant’s response to the final rejection. In order to participate in the P3 program, the applicant will be required to: 

1: file a request for consideration within two months from the mailing date of a final rejection and prior to filing a notice of appeal (transmittal form PTO/SB/444); 

2: file a response to the final rejection under 37 C.F.R. §1.116 together with the request, with no more than five (5) pages of argument; and 

3: provide a statement that the applicant is willing and available to participate in the conference with a panel of examiners.    

The applicant will have the option of including a proposed non-broadening amendment to a claim(s) in the response to the final rejection, similar to the proposed amendment(s) possible under the AFCP 2.0 program. The applicant also has the opportunity to make an oral presentation to the panel of examiners, similar to the Pre-Appeal Brief Conference Pilot Program. No fees are required to participate in the P3 program. Please note, in order to be eligible for the P3 program, the applicant cannot have previously filed a request to participate in the Pre-Appeal Brief Conference Pilot Program or a request under AFCP 2.0 in response to the same outstanding final rejection. 

The applicant will be informed of the panel's decision in writing via the mailing of a Notice of Decision.  The Notice of Decision will indicate one of the following: (a) final rejection upheld; (b) allowable application; or (c) reopen prosecution. In appropriate circumstances, a proposed amendment may accompany the Notice of Decision proposing changes that, if accepted, may result in an indication of allowability. 

At this time, the PTO is only accepting 1600 total requests for the P3 program and no more than 200 requests per technology center before the program expires on January 12, 2017.

Washington, D.C. Area Office
112 S. West St.
Alexandria, VA 22314
Tel: (703) 548-6284

New Jersey Office
103 Carnegie Center, Suite 300
Princeton, NJ 08540
Tel: (609) 955-3458

Email: ip@nathlaw.com

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