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USPTO Initiates Post-Prosecution Pilot Program (P3)

Andrew B. Freistein
August 2, 2016

On July 11, 2016, the USPTO announced a new Post-Prosecution Pilot Program (“P3”). This new pilot program combines aspects of the After Final Consideration Pilot Program 2.0 (“AFCP 2.0”) and the Pre-Appeal Request for Review Program (“Pre-Appeal”) by permitting both claim amendments and up to five pages of arguments. However, under P3 (unlike a Pre-Appeal), a conference will be held with Applicant’s attorney and a panel of Examiners, typically including the Examiner, the Supervisory Examiner, and a Primary Examiner. Applicant’s attorney will be given 20 minutes to present oral arguments addressing the final rejection via telephone, WebEx conference or in person.

To be eligible for P3, Applicant must file (1) a P3 transmittal form, (2) a response to the Office Action containing no more than five pages of arguments, (3) a statement that Applicant’s attorney is available for the conference, and optionally (4) any desired narrowing claim amendments. These items must be filed within two months of issuance of the final Office Action and before filing a Notice of Appeal. Additionally, Applicant cannot have filed an AFCP 2.0 request or a Pre-Appeal in response to the same Office Action. There is no USPTO fee for the P3 program.

Filing a P3 request does not toll the due date for response to a final Office Action. If the P3 request does not result in allowance or re-opening of prosecution, Applicant must proceed with (i) filing a Notice of Appeal or (ii) filing a request for continued examination (RCE) within six months from the mailing of the Office Action to avoid abandonment.

The USPTO will accept P3 requests until either January 12, 2017 or the date a total of 1,600 compliant requests are filed, whichever occurs first. Additionally, each Technology Center will accept no more than 200 compliant requests.

The USPTO has also solicited comments on the P3 program to be filed on or before November 14, 2016 in an effort to improve after final practice and to reduce the number of appeals to the PTAB and the number of RCEs filed.

The Federal Register announcement can be found here: