The IP Manager’s Playbook: Leveraging the Tools of the USPTO, Part I – Awaiting the Return of P3
In July, 2016 the Patent Office initiated the Post-Prosecution Pilot program (P3), designed to reduce the use of RCE’s and the pendency of applications, as well as to improve the collaboration between applicants and Examiners. The program ended this past January, when the six-month time frame for the test program was reached. While the program’s results are currently being reviewed by the Patent Office, in view of its popularity, there’s a good chance that the P3 program will be reconstituted in one form or another. It’s worth taking another look to review what the program was all about.
The P3 program followed two earlier PTO programs, the Pre-Appeal brief conference pilot and the after final consideration program 2.0 (AFCP 2.0), but was viewed as an improvement over both. P3 utilizes a panel of three Examiners similar to the pre-appeal brief program, to bring a second set of eyes to bear on the matter. However, P3 also permits a response to include a narrowing amendment, and for the Applicant to make an oral presentation to the panel. Finally, P3 requires the panel to provide a written summary of the decision, unlike that of the pre-appeal brief conference.
There are several requirements for the P3 program. First, the Applicant cannot have previously filed a proper request to participate in the Pre-Appeal or AFCP 2.0 program to the same Final Rejection. The P3 request needs to be filed no later than 2 months after the Final Office Action, along with a response that is limited to a maximum of 5 pages. To save space, arguments made in prior responses can be incorporated by reference, and the arguments can be single-spaced. The Applicant can narrow the claims by amendment to place them in condition for allowance, but should take care not to amend them so extensively that it places the search/consideration time necessary outside the time available. A statement of willingness to participate in a 20-minute conference must also be signed.
Figure 1 illustrates a simplified flow of the P3 program. It begins with a Final Office Action, where the Applicant presumes that the Examiner has clearly not understood things properly. The Applicant has two months to electronically file the P3 request, and it must be prior to the Notice Of Appeal. This represents an advantage over the Pre-Appeal Brief program since one can save the cost of the notice of appeal. The pertinent Technology Center in the PTO will check the Request to make sure it is timely and compliant. If it’s not, the request is treated as a submission under 1.116. However, assuming there are no problems with the request, the Applicant will be notified to schedule a conference with the three examiners. If the Applicant doesn’t respond, or if no agreement can be reached, it is again treated as a submission under 1.116. The conference itself can be done as an in-person conference, a video conference or a teleconference, where the Applicant is given 20 minutes to present arguments. The materials used during the presentation will be made of record but won’t count against the 5-page limit. The panel will make a decision immediately after the presentation, and it will be mailed. The decision will be: (i) the application is allowed; (ii) prosecution is reopened; or (iii) final rejection is upheld. An improved explanation of the upheld rejections is provided.
Final statistics of the program have not yet been published, however, results released during the program indicated that about 80% of the submissions were accepted, and about 60% of the approved submissions had conferences.
If and when the P3 returns, the PTO will need to look at how it determines the composition of the examiner panels. While an argument of expediency can be made about the panels being comprised of those with the most in-depth understanding of the case at hand, namely the Examiner and perhaps the SPE. However, with two-thirds of the panel members having a direct stake in the review’s outcome, the odds seem a bit stacked against the interests of the Applicant. The PTO would do well to consider assigning examiners as permanent members of a dedicated panel to handle only P3 reviews and project a higher standard of impartiality. Meanwhile, we will have to await the PTO’s decision, in its ongoing effort to streamline the patent prosecution process, whether to reconstitute the program in whole or in part and with what possible revisions.
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