USPTO Introduces New Post-Prosecution Pilot Program (P3)

In July, the United States Patent and Trademark Office (USPTO) introduced a new pilot program for review of patent applications following issuance of a Final Rejection. This Post-Prosecution Pilot ("P3") Program was developed as part of the USPTO's Enhanced Patent Quality Initiative and was designed to test its impact on improving the patent prosecution process during the period following issuance of a Final Rejection and prior to the filing of a Notice of Appeal.

The P3 Program allows an applicant to seek review of a Final Rejection before a panel of three patent examiners. The P3 Program opened on July 11, 2016 and will run for six (6) months, or until 1600 requests have been accepted, whichever comes first. Moreover, each individual technology center will only accept 200 requests and the P3 Program will close for a particular technology center once it has accepted 200 compliant requests.

The P3 program is open to nonprovisional and international utility applications that are under final rejection. Reissue, design and plant applications and reexamination proceedings are not eligible. There is no fee required to participate in the program. A Certification and Request for Consideration under the Post-Prosecution Pilot Program must be electronically filed within two months of the mailing date of the final rejection and prior to filing a notice of appeal. The applicant must submit a response to the final rejection, comprising no more than five pages of argument. Amendments do not count toward the five page limit.

Once a proper request has been submitted, the USPTO will contact the applicant and schedule the P3 conference, which normally is scheduled within ten calendar days of the initial contact. The applicant is entitled to twenty (20) minutes to make a presentation to the three-examiner panel (in-person or by telephone or video-conference). Following the applicant's presentation, the panel will confer. The applicant will be informed of the panel's decision in writing, which will be one of the following: (1) Final Rejection Upheld (whereby the applicant can avoid abandonment by timely filing a notice of appeal or request for continued examination); (2) Allowable Application; or (3) Reopen Prosecution (wherein the rejection(s) is/are withdrawn and a new Office Action will be mailed).

The P3 program is designed to be a cost-effective option for obtaining review prior to considering whether to file a Request for Continued Examination or to pursue an appeal.