Recently, the United States Patent and Trademark Office (USPTO) announced a new pilot program for review of applications after the issuance of a Final Rejection. Combines Features of Pre-Appeal Conference & After-Final 2.0 Program with the goal to compact (patent) prosecution.
One of the more frustrating aspects of securing U.S. patent protection is the process of prosecuting a patent application after it has been drafted and filed. “Patent prosecution” is an administrative process of the United States Patent & Trademark Office (USPTO) encompassing the interaction between patent examiners (such as attorneys and agents) and technical innovators (applicant) to determine how broad or narrow the scope of protection is in a given case.
Now, the USPTO adds a new pilot programm called “P3”. The Post-Prosecution Pilot Program (“P3”) allows for an Applicant to seek review of a Final Rejection by a panel of Examiners. The P3 Program is expected to function similarly to a Pre-Appeal Conference, however, it appears there will be a number of advantages to using the new program that may result in an improved success rate for Applicants. More specifically, some of these advantages include:
• During a P3 conference, the Applicant is provided with 20 minutes to verbally present to a three-examiner panel (either in-person, by telephone, or via video conference);
• The Applicant may use presentation materials during the P3 conference, not counted against the five-page limit on arguments; and
• The Applicant may optionally include a proposed non-broadening amendment for the three-examiner panel to review.
Unlike a Pre-Appeal Conference, a Notice of Appeal and the required fee do not need to be filed in order to request a review under the P3 Program. In fact, there are no additional government fees for requesting a review under the P3 Program. However, it should be noted that if the Final Rejection is upheld or the request for review under the P3 Program is denied, the request will be treated similarly to an After-Final Response and will not toll the statutory period for replying to the Office Action.
In order to obtain a review under the P3 Program, at least one independent claim must be under final rejection and a request must be made within two months of the Final Office Action. The P3 request is limited to five pages of arguments, including any affidavits. Proposed claim amendments do not count toward the page limit, but, should not necessitate an extensive additional search. Although the Applicant is allowed to use as many pages of exhibits as desired during the oral presentation, any such materials provided or shown to the panel will be entered into the record.