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New After Final Program at USPTO

July 20, 2016 – In an attempt to reduce the number of appeals and RCE filings, and streamline after final practice, the USPTO launched a new pilot program on July 11, 2016. The program, known as the Post-Prosecution Pilot Program or P3, combines features of two existing after final programs, the Pre-Appeal Brief Conference Pilot Program (Pre-Appeal Program) and the After Final Consideration Program (AFCP 2.0). While having another option for after final practice is advantageous, the new program is not without its limits.

In general, P3 is a hybrid of the other two after final practices combining advantageous features of each. For example, a P3 submission will be reviewed by a panel of three examiners, which is one of the better features of the Pre-Appeal program. Further, the P3 submission can include a proposed amendment as in AFCP 2.0, which is not permitted under the Pre-Appeal Program. In addition to these two aspects, P3 has another advantage unto itself. The applicant will be able (actually required) to give a 20 minute oral presentation of the arguments to the panel of examiners (conference with panel). Although an AFCP 2.0 submission can result in an interview with the examiner, this is not guaranteed.

The requirements for a P3 submission are relatively straightforward. The applicant must submit a form that identifies the submission as a P3 submission. The submission must include a response to the final rejection limited to 5 pages of arguments (amendment pages will not count against the 5 page argument limit). Finally, the submission can optionally include a proposed non-broadening amendment to the claim(s). There is no fee required for filing a P3 submission. Note that filing a P3 submission will not change the six-month deadline for reply to the final rejection.

After the submission is filed and the conference completed, the panel will issue a decision. The decision will indicate whether the proposed amendment is entered and will state one of three holdings: (a) final rejection upheld, (b) application allowed, or (c) prosecution reopened. If the final rejection is upheld, the decision will include reasons for why the rejection is being maintained. The decision may even include a proposed amendment from the panel that could lead to an indication of allowability.

But, the P3 program does have its disadvantages and pitfalls. The 5 page argument limit is disappointing, but probably sufficient in many cases. However, it is important to note that any affidavit or evidence will count towards that 5 page limit. Aside from the page limit, a more disappointing issue is timing. The P3 submission must be filed within 2 months of the Final rejection. Neither the Pre-Appeal Program nor the AFCP 2.0 has this time limit.

Perhaps, the aspect that will most trouble applicants is the exclusivity associated with P3 submissions. Once a P3 submission is accepted, no further Response to the Final rejection will be entered (unless suggested by the panel), and no request for the Pre-Appeal Program or AFCP 2.0 will be accepted. Additionally, if a proper request for the Pre-Appeal Program or AFCP 2.0 has already been filed, the applicant will not be permitted to participate in the P3. Moreover, only one P3 request will be accepted in response to the Final rejection.

Streamlining after final practice in a manner that does not increase costs for applicants is an admirable and worthy goal. However, forcing the applicant to choose the new P3 path and no other, within 2 months of receiving the final rejection, will likely limit the effectiveness of this program.

For now, P3 is a pilot program and thus is a limited time offer. The program will continue until January 27, 2017 or until 1,600 P3 requests are submitted, whichever occurs first, and each Technology Center can only accept 200 requests.

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