USPTO Initiates Post-Prosecution Pilot Program

By Donald Zuhn –-

On Monday, the U.S. Patent and Trademark Office published a notice in the Federal Register (81 Fed. Reg. 44845) regarding the initiation of a new pilot program intended to enhance patent practice during the period after the issuance of a final rejection and before the filing of a notice of appeal or Request for Continued Examination (RCE).  Under the new pilot program -- or Post-Prosecution Pilot Program (P3) -- an applicant can file a request for consideration under the P3 and a response to a final rejection (along with proposed non-broadening amendments to the claims), participate in a conference with a panel of examiners to review the response, and then receive a written decision from the panel.

Before setting out the requirements for the P3, the notice briefly describes two after final pilot programs that are already in place:  the Pre-Appeal Brief Conference Pilot Program and the After Final Consideration Pilot Program 2.0.  Under the Pre-Appeal Brief Conference Pilot Program, which was initiated in 2005, an applicant can file a notice of appeal together with a request to participate in the program and have a panel of examiners (including the examiner of record) formally review the rejections of record in light of the remarks provided in the request.  Under the After Final Consideration Pilot Program 2.0, which was initiated in 2013, examiners can consider a response filed after a final rejection pursuant to 37 C.F.R. § 1.116 that includes remarks and amendments that may require further search and consideration, provided that at least one independent claim includes a non-broadening amendment.  The Office notes that the P3 combines features from each of the earlier after final pilot programs (e.g., permitting an applicant to file an after final response including a proposed amendment for consideration by a panel of examiners) with new features (e.g., affording an applicant with an opportunity to make an oral presentation to a panel of examiners).

In order to be eligible to participate in the P3, an application must contain an outstanding final rejection and the application must be an original utility nonprovisional application filed under 35 U.S.C. § 111(a) or an International utility application that has entered national stage under 35 U.S.C. § 371.  Therefore, reissue, design, and plant applications, as well as reexamination proceedings, are not eligible to participate in the P3.  The requirements for participation in the P3 include:

(1) A transmittal form, such as form PTO/SB/444, that identifies the submission as a P3 submission and requests consideration under the P3.

(2) A response under 37 C.F.R. § 1.116 comprising no more than five pages of argument.

(3) A statement that the applicant is willing and available to participate in a conference with a panel of examiners.

The notice indicates that the P3 request must be within two months from the mailing date of a final rejection and prior to filing a notice of appeal or RCE.  The notice also indicates that that all papers associated with the P3 request must be filed via the USPTO's EFS-Web electronic filing system, and that an applicant cannot have previously filed a proper request to participate in either the Pre-Appeal Brief Conference Pilot Program or After Final Consideration Pilot Program 2.0.  A request filed on or after the date a notice of appeal, RCE, express abandonment, request for declaration of interference, or petition requesting the institution of a derivation proceeding will be considered to be untimely and the P3 request will be treated under 37 C.F.R. § 1.116 in the same manner as any non-P3 response to a final rejection.  There is no fee for participation in the P3.

The notice also indicates that the response must be a separate paper from the transmittal, and that the response may contain proposed non-broadening amendments to the claims (which will not count towards the five-page limit) and affidavit or other evidence (which will count towards the five-page limit).  A page consisting only of a signature will not be counted towards the five-page limit.  In addition, the notice indicates that the response may refer to an argument already of record by referring to the location of the argument in a prior submission and identifying the prior submission by title and/or date.  The notice further indicates that the response may be singled spaced but must comply with the requirements of 37 C.F.R. § 1.52(a).

The Office notes that applicants can easily comply with the conference participation statement requirement by using form PTO/SB/444, which includes the required statement.  If a P3 request is found to be timely and compliant, the Office will contact the applicant to schedule a conference (which may be conducted in-person, by telephone, or by video conference).  If within ten calendar days from the date the Office first contacts the applicant, the Office and the applicant are unable to agree on a time to hold the conference, or the applicant declines to participate in the conference, the request will be deemed improper and the request will be treated under 37 C.F.R. § 1.116 in the same manner as any non-P3 response to a final rejection.  Participation by the applicant in the conference will be limited to 20 minutes.

Following the conference, a Notice of Decision from Post-Prosecution Pilot Conference (form PTO–2324) will be mailed indicating that:  (1) the final rejection was upheld, (2) the application is allowable, or (3) prosecution is being reopened.  In the event that the final rejection was upheld, the time period for taking further action in response to the final rejection will be the later of the mailing date of the notice of decision or the date set forth in the final rejection.  The Office notes that it will not grant petitions seeking reconsideration of a panel decision upholding a final rejection.

The Office began accepting requests under the new pilot program on Monday, July 11, and will continue to accept P3 requests until the earlier of January 12, 2017 or the date in which the Office has collected a total of 1,600 complaint requests (with each Technology Center being allowed to accept no more than 200 compliant requests).  The notice indicates that the filing of a P3 request does not toll the six-month statutory period for replying to a final rejection, and that timely and compliant requests submitted after the technology center reviewing the request has reached its 200-request limit will be treated under 37 C.F.R. § 1.116 in the same manner as any non-P3 response to a final rejection.

The Office's notice also requests comments on the P3 as well as other suggestions for improving after final practice and reducing the number of appeals and RCEs.  Written comments, which must be received by the Office on or before November 14, 2016, should be sent by e-mail to [email protected], or by regular mail addressed to:  United States Patent and Trademark Office, Mail Stop Comments—Patents, Office of Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Raul Tamayo.

Additional information regarding the P3 can be found in the Office's notice.

Comments

[EG]

Hey Don,

I wish I could say that this Post-Prosecution Pilot Program was a positive response by the USPTO, but I can't. It just comes across as yet another PR campaign by the USPTO management to act like their doing something to address significant prosecution problems, especially in notoriously "anti-patent" Art Units such as 3600. Until I see/hear otherwise, I've got a very jaundiced view of this new program.

[Mike]

In my experience, proper requests under the AFCP 2.0 request program are often avoided by Examiner's arguing that additional searching is necessary - even if amendments are copied directly from dependent claims.