New USPTO P3 Program Offers Applicant Participation In After Final Conference

The USPTO has launched a new after final program available starting today, July 11, 2016. The Post-Prosecution Pilot Program (P3) combines features of the After Final Consideration Pilot 2.0 (AFCP 2.0) and Pre-Appeal Brief Conference Pilot programs, and adds a feature that stakeholders have been clamoring for–Applicant participation in the process. The P3 program will run through January 12, 2017, or the date the USPTO has accepted 1,600 compliant requests. However, each individual technology center will accept only 200 compliant requests, so the program could close earlier in a given technology center.

The USPTO P3 Program Requirements

This July 11, 2016 Federal Register Notice outlines the requirements of the P3 program. Some of the key requirements are outlined below, but practitioners and stakeholders considering using the program should study the notice in detail.

• A P3 Request must be filed within two months of the mailing date of the final Office Action
• Up to 5 pages of arguments can be submitted (similar to the page limit of the Pre-Appeal Brief Conference Pilot program)
• Claim amendments can be presented, but will be considered under 37 CFR § 1.116 (which is more restrictive than AFCP 2.0)
• An affidavit can be submitted, but must be admissible under § 1.116 and will count towards the 5 page limit

The USPTO P3 Panel

Once a P3 request is determined to comply with the requirements, a Supervisory Patent Examiner (SPE) (most likely the SPE of the examiner of record) will “coordinate a panel experienced in the relevant field of technology.” According to the Federal Register Notice, the P3 panel “may include the examiner of record, the SPE, and a primary examiner (preferably the signing primary examiner for the examiner of record, if the examiner of record is a junior examiner).”  As stated in the Federal Register Notice, “[e]very reasonable attempt will be made to select panel members with the most expertise in the relevant technological and legal issues raised by the application under consideration.”

The Federal Register Notice describes the conference as being similar to an oral argument in an ex parte appeal before the PTAB, in that the Applicant will have 20 minutes to present its case to a panel of examiners. The conference can be conducted in-person, by telephone, or by WebEx® video conference.

Once the P3 request is determined to comply with the requirement, the USPTO will contact the Applicant to schedule the P3 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 treated” as a regular after-final response under 37 CFR § 1.116.

Possible Outcomes Of A P3 Conference

After the conference, the P3 panel will decide how the application should proceed. As with the Pre-Appeal Brief Conference Pilot program, they will choose among three options:

1. Final rejection upheld
2. Allowable application
3. Reopen prosecution

Additionally, “[i]n appropriate circumstances, a proposed amendment may accompany the notice of decision proposing changes that, if accepted, may result in an indication of allowability.”

Unlike the Pre-Appeal Brief Conference Pilot program, even if the panel determines that some rejections will be upheld, it will provide “reasons for maintaining any rejection, and include an indication of any rejection that has been withdrawn as a result of the conference.” Also, the panel will indicate whether any after-final claim amendments will be entered for purposes of appeal.

Options After A USPTO P3 Decision

As with any prosecution after final, filing a P3 request does not stop the statutory six-month clock running from the final Office Action. However, since a P3 request must be filed within two months of the final Office Action and the P3 conference must be scheduled shortly thereafter, the panel should be able to render a decision within the statutory six-month period.

If the P3 panel issues a notice of decision that upholds one or more of the rejections, the next deadline for taking action expires “on (1) the mailing date of the notice of decision; or (2) the date set forth in the final rejection, whichever is later.” That means that if the panel does not allow the application or reopen prosecution, the Applicant likely will need to pay for an extension of time to file an RCE or Notice of Appeal. The Federal Register Notice emphasizes that the Applicant will have to file an RCE or Notice of Appeal to continue pursuing the application–no further after-final responses will be considered.

If the P3 panel issues a notice of decision to reopen prosecution, the clock stops running against the Applicant until a new Office Action is issued.

If the P3 panel issues a notice of decision to allow the application, it will be mailed with a Notice of Allowability.

Exiting The P3 Program

The following actions will cause the application to exit the P3 program, and any response filed with the P3 request will be considered under 37 CFR § 1.116.

• failing to schedule the P3 confernece within the 10-day period
• filing a notice of appeal
• filing an RCE
• filing an express abandonment
• filing a request for declaration of interference
• filing a petition requesting the institution of a derivation proceeding

Improving Prosecution With The P3 Program

The USPTO’s three main goals for the P3 program are to “(1) [i]ncrease the value of after final practice; (2) reduce the number of appeals and the issues to be taken on appeal to the PTAB and the number of RCEs; and (3) streamline the options available to an applicant during after final practice.” Stakeholders experienced with the Pre-Appeal Brief Review Pilot program have criticized that program for appearing to being stacked against the Applicant, devoid of Applicant involvement and not providing any information when a rejection is upheld. The P3 program directly responds to those concerns by giving Applicants an opportunity to present their case orally to the P3 panel and promising more of an explanation when a rejection is upheld. Although the P3 panel still will include the examiner of record and that examiner’s SPE, at least the Applicant can speak for itself at the P3 conference.

The USPTO requests public comment on the P3 program, and other suggestions for improving after-final practice and reducing the number of appeals and RCEs. Comments can be sent by electronic mail to [email protected], and are requested by November 14, 2016.