USPTO Post-Prosecution Pilot May Be Beneficial for Patent Applicants


The USPTO has created a new option for patent applicants who receive a rejection in a final Office Action – the Post-Prosecution Pilot (“P3”). Like the Pre-Appeal Brief Conference Pilot Program, in P3 the applicant files a short response (no more than five pages) to be considered by a panel of three examiners. The applicant may also file an optional non-broadening claim amendment. 

However, unlike other programs, P3 allows the applicant to make a twenty minute oral presentation to the examiner panel. Also, the panel’s decision will include an explanation supporting its decision, rather than the simple check box of the Pre-Appeal Brief Conference decisions. 

The request to participate in P3 must be filed within two months of the date of the final Office Action and before filing a notice of appeal. There is no fee required by the USPTO to participate in P3. However, reissue, design, and plant applications, and reexamination proceedings, are not eligible. Additionally, applicants cannot use the Pre-Appeal Brief Conference or After Final Consideration Program for the same final Office Action in which they participate in P3. 

The program will initially run for 6 months or until 1,600 requests have been accepted, whichever comes first.  Each individual technology center will accept no more than 200 requests. The USPTO has posted a running tally of the accepted requests by tech center. As of August 12, the numbers are as follows: 

  Technology Center ____Number of Accepted Requests

  1600_____8          1700_____12          2100_____35          2400_____33

  2600_____22        2800_____21          3600_____38          3700_____39  

More information is available in the slides from the August USPTO Quality Chat and in the Federal Register Notice published July 11, 2016. 

For rejections of claims as non-statutory subject matter under 35 U.S.C. § 101, it will be interesting to see if one of the examiner panel members is the examiner designated as the “101 Resource” for the tech center. Hopefully, this will be the case, as these resources seem to have a continuing impact on examiners’ 101 decisions.




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