By Samantha Leiner
Purpose and Implementation of Post-Prosecution Pilot Program (P3):
The USPTO created the new pilot program, Post-Prosecution Pilot Program (P3), in response to stakeholder input gathered during various public forums to support the USPTO’s Enhanced Patent Quality Initiative. The purpose of the new P3 Pilot Program is to see if the USPTO can improve patent practice between a final rejection from the USPTO and a notice of appeal by the applicant.
Under the P3, a panel of examiners, including the examiner on record for the application, will hold a conference with the applicant to review the applicant’s response of the final rejection given by the USPTO. According to the Federal Register’s summary of the new P3 program, the purpose of the program was to “increase the value of after final practice by (1) leveraging applicant input obtained through an oral presentation during a conference with a panel of examiners, and (2) also providing written explanation for the panel decision.” United States Patent and Trademark Office; Post Prosecution Pilot Program, 81 Fed. Reg. 44,845 (July 11, 2016). The applicant will also “have the option of including in the response a proposed non-broadening amendment to a claim(s).” Id.
The program is also designed to help ease the load of appeals cases the Patent Trial and Appeals Board (PTAB) hears and to “reduce the number of Requests for Continued Examination (RCE).” Id.
The P3 program will begin accepting applications on July 11, 2016, until the first of two dates has occurred: (1) January 12, 2017 or (2) when the Office has accepted a total of 1,600 complaint requests to participate under the P3. Id. Each technology center may accept no more than 200 complaint requests, which means that one technology center may stop accepting requests before another technology center. Id. at 44,846.
Background of Pilot Programs:
There has been two other Pilot Programs administered at the USPTO within the last 11 years: the Pre-Appeal Brief Conference Pilot Program (Pre-Appeal program), which was first administered in 2005, and the After Final Consideration Pilot Program 2.0 (AFCP 2.0), which was first administered in 2013.
The Pre-Appeal program “provides an avenue for a patent applicant to request a review of the basis of a rejection(s) in a patent application prior to the filing of an appeal brief.” Id. A difference between the Pre-Appeal program and the P3 is that the Pre-Appeal program allows for the request to be filed in conjunction with a notice of appeal, while the P3 program requires the request be submitted before a notice of appeal. When the request for the Pre-Appeal program is filed with a notice of appeal, “a panel of examiners (including the examiner of record) formally reviewed the rejections of record in light of the remarks provided in the request.”
The AFCP 2.0 allows “examiners [to] consider a response filed after a final rejection pursuant to 37 CFR 1.116 that includes remarks and amendments that may require further search and consideration, provided that at least one independent claim includes a nonbroadening amendment.” Id. Additionally, “the examiner also may conduct an interview with the applicant when the response does not place the application in condition for allowance.” Id.
The P3 combines the effective features of both the Pre-Appeal program and the AFCP 2.0, while adding new features as well. The P3 takes the consideration of an after final response by a panel from the Pre-Appeal program, takes the optional proposed amendment included in the after final response, and adds “an opportunity for the applicant to make an oral presentation to the panel of examiners.” Id.
Requirements for New Pilot Program:
For an applicant to be eligible to participate in P3, “an application must contain an outstanding final rejection and be (i) an original utility non-provisional application filed under 35 U.S.C. 111(a), or (ii) an international utility application that has entered the national stage in compliance with 35 U.S.C. 371 (see 37 CFR 1.491).” Id. A continuing application is filed under 35 U.S.C. § 111(a) and is allowed to participate in the P3. “Reissue, design, and plant applications, as well as reexamination proceedings, are not eligible to participate in the P3.” Id. A request for response under 37 C.F.R. § 1.116 for consideration under the P3 must include:
- Transmittal Form. While an applicant may submit their own transmittal form, the USPTO suggest using its provided transmittal form, PTO/SB/444, because it will help the PTO to “quickly identify P3 requests and facilitate timely processing.” at 44,847.
- The response required for the P3 must be separate from the transmittal form and cannot be more than 5 pages of arguments. Additionally, the arguments are limited to appealable, not petitionable, matters. The PTO considers conclusions, definitions, claim charts, and diagrams as part of the argument in the response. Therefore, those elements are limited to the 5-page limit as well. Arguments in the response may be directed to the patentability of the proposed amendment if one is included. The pages containing the actual proposed amendment will not count towards the 5-page limit. If the applicant submits an affidavit or other evidence, that affidavit or other evidence will be counted towards the 5-page limit. The transmittal form, if it does not include any arguments, will not count towards the 5-page limit. If a page of the response consists solely of a signature, then that page will not count towards the 5-page limit. The applicant will not be able to circumvent the 5-page limit by including arguments in different documents. The response may be single-spaced, but must comply with the requirements under 37 C.F.R. § 1.52(a). In order to stay within the 5-page limit, the response can refer to an argument already on the record rather than repeating the argument “by referring to the location of the argument in a prior submission and identifying the prior submission by title and/or date.” Id. Simply stating “the arguments of record” or “the paper dated X” without a pinpoint citation, will not be accepted for consideration of the P3.
- Statement that Applicant is Willing and Available to Participate in the Conference with the Panel of Examiners. The applicant must submit a statement verifying that he/she is “willing and available to participate in the conference with the panel of examiners.” This can be done simply if the applicant uses the for PTO/SB/444 for the transmittal form as well. Once the PTO has determined the request for the P3 is timely and compliant, the PTO will contact the applicant about scheduling the conference. If after 10 days, the PTO and the applicant cannot agree on a scheduled conference or the applicant declines to participate in the conference, the request for the P3 will be deemed improper and declined. The applicant can participate in the conference in person, by telephone, or by video conferencing tool set up by the PTO. The applicant is able to present to the panel in the conference “in a manner similar to how an applicant presents an argument in an ex parte appeal before the PTAB.” Id. the applicant’s presentation may take up to 20 minutes.
- Proposed Amendment (Optional). Any entry of a proposed amendment is governed by 37 C.F.R. § 1.116. See MPEP 714.12. The biggest concern with the proposed amendment is that they may not broaden the scope of a claim in any aspect. The analysis for whether a propose amendment broadens a claim impermissibly is similar to the guidance set forth ins MPEP § 1412.03 for determining whether a reissue claim has been broadened. Proposed amendments that focuses on a single independent claims are the amendments more likely place the application into condition for allowance. If a proposed amendment contains extensive amendments (either in terms o the nature of the amendment or to the claims to be amended), it will require a more extensive consideration and would likely not place the application in condition for allowance.
Only one P3 request will be filed per final rejection by the USPTO. Additionally, there is no fee required to request consideration under the P3 and all papers to be filed for the P3 must be filed using the USPTO’s Electronic Filing System-Web (EFS-Web). Further, to be eligible for the P3, an applicant must not have previously filed for the Pre-Appeal program or the AFCP 2.0.
An applicant must have filed a P3 request “within two months from the mailing date of a final rejection and prior to filing a notice of appeal.” Id. A request for P3 will be seen as untimely “if it is filed (i) more than two months from the mailing date of the final rejection, (ii) in an application that does not contain an outstanding final rejection (e.g., a P3 request will not be accepted in response to a second action non-final rejection), (iii) in response to a final rejection for which a proper AFCP 2.0 request has been filed, (iv) on or after the date a RCE or notice of appeal is filed in response to the same outstanding rejection, or (v) on or after the date an express abandonment is filed.” Id. at 44,846-44,847.
USPTO’s Procedures on Requests for New Pilot Program:
After a request is submitted to the PTO for the P3, the PTO determines if the request if timely and compliant with the requirements. If the request is timely and compliant, the PTO will contact the applicant to schedule the conference. If the request is untimely and/or non-compliant, a conference will not be held. If untimely and non-compliant, the PTO will communicate the reason the request was found to be untimely or non-compliant. If the request is timely and compliant, but the technology center has reached its 200 request limits, a conference will not be held.
An important note is that the filing of a P3 request will not toll the six-month statute of limitations on replying to the final rejection. To avoid abandonment of appealing the final rejection, further action, such as a notice of appeal or RCE, will have to be done within the six-month statutory period.
The panel of examiners will most likely consist of the examiner of record, the SPE, and a primary examiner, who is usually the signing primary examiner for the examiner of record fi the examiner of record is a junior examiner.
Any materials used in the presentation by the applicant “will be placed in the file and will not count against the 5-page limit on arguments.” Id. at 44,848.
After the conference, the applicant will be informed of the panel’s decision. The decision may indicate one of the following:
- Final Rejection Upheld. The notice if the final rejection is upheld “will not contain any additional grounds for rejection or any restatement of previously made rejection.” The notice will simply summarize the status of the claim and will communicate any reasoning for rejection of the proposed amendments. … The time period for any other action on the final rejection expires on “(1) the mailing date of the notice of decision; or (2) the date set forth in the final rejection, whichever is later.” Id. at 44,849. A notice of decision indicating “final rejection upheld” is not petitionable, but is subject to appeal.
- Allowable Application. The notice of decision will be mailed with a notice of allowance, and the notice will state that the rejection(s) is/are withdrawn.
- Reopen Prosecution. The notice of decision will state the rejection(s) are withdrawn, and a new Office Action is sent to the applicant. It will also state that no further action is required by the applicant until notified.
If the applicant files any of the following after the date of filing a P3, but prior to a notice of decision from the panel, the request for the P3 will be terminated on the merits: “a notice of appeal, a RCE, an express abandonment under 37 C.F.R. § 1.138, a request for the declaration of interference; or a petition requesting the institution of a derivation proceeding.” Id. The office will communicate with the applicant the reason for the termination of the P3 proceeding, “the result of the treatment under 37 CFR 1.116 of the response and any proposed amendment filed with the request, and the time period for the applicant to take any further action that may be required as dictated by the facts.