Taking Advantage of the Post-Prosecution Pilot Program
The P3 is initially scheduled to run for six months until January 11, 2017, or until 1,600 requests are received.
Once the U.S. Patent and Trademark Office (USPTO) issues a Final Rejection, a patent applicant is faced with an important decision regarding what to do next. Options include: filing a Notice of Appeal, filing a Request for Continued Examination (RCE), filing an after final response or amendment, or abandoning the application. In August 2016, 16,489 cases were pending on appeal at the Patent Trial and Appeal Board (PTAB, formerly the Board of Patent Appeals and Interferences)—down from 25,863 pending cases in August 2013. This reduction of 9,374 pending appeals over three years does not take into consideration that over 8,500 new appeals were filed in 2015 alone. The backlog of pending appeals has been reduced by increasing the number of judges from 80 in 2009 to 180 in 2014; however, the backlog continues to factor into the pendency of applicants that are on appeal.
While the number of pending cases on appeal has decreased, the total pendency (from filing date of an application until a decision by the PTAB) has only decreased from 88.1 to 81.3 months over the last three years. The current 81.3-month pendency for applications on appeal compares to a pendency of about 36 months for applications that do not go through appeal. Time can be money when a company waits for a patent to issue, fending off competitors while investing in preparing and bringing a product to market. The appeal process can easily double the pendency time with no guarantee of a favorable decision on appeal.
Thankfully, in an effort to reduce the number of appeals to the PTAB, the USPTO launched the Post-Prosecution Pilot Program (P3) on July 11, 2016. The P3 is something of a combination of Pre-Appeal Brief Conference Program, which provides for an applicant to submit a five-page summary of the issues for review by a panel of examiners that can allow the application, re-open prosecution or proceed to appeal, and the After Final Consideration Program, which provides extra time for examiners to consider claim amendments and arguments after a Final Rejection.
To participate in the P3, an applicant has to file a request to participate within two months of the mailing date of an outstanding Final Office Action prior to filing a Notice of Appeal. The request is filed together with a response to the Final Rejection and a statement that the applicant is willing and available to participate in the conference. The response filed by the applicant can include non-broadening amendments to the claims. A panel of examiners, including the examiner of record, will hold a conference to review the applicant’s response to the final Office Action.
A nice feature of the P3 is that the applicant can participate in the conference by providing a 20-min presentation before the panel convenes. After convening, the panel will provide a written Notice of Decision that will include and explain the panel’s decision to uphold the Final Rejection, allow the application, or re-open prosecution; it will also indicate the status of any proposed amendments.
If the application is allowed, no further action will be necessary. If prosecution is re-opened, the applicant would have an opportunity continue prosecution without filing an RCE. If the application is not allowed, the Notice of Decision should provide the applicant with information on an examiner’s position that can be used strategically if prosecution is continued in an appeal or by filing an RCE. In the case of continuing prosecution by filing an RCE without participating in the P3, information on the examiner’s position would only be produced in a Non-Final Office Action. The applicant would then have only one chance to present arguments/claim amendments (that could have been submitted in a P3 Request) before an examiner would likely issue a Final Office Action that would severely limit an applicant’s ability to further prosecution.
The P3 is initially scheduled to run six months until January 11, 2017, or until 1,600 requests are received. As with all new “pilot” programs, the P3 will be evaluated and should be extended if it is determined to be a viable program. During the initial six-month period, each individual technology center will accept no more than 200 requests. As of October 11, 2016, technology centers 3600 and 3700 have received 168 and 177 requests, respectively. (An update of requests received by technology centers can be found at https://www.uspto.gov/patent/initiatives/post-prosecution-pilot.)
Any views or opinions expressed in this column are those of the author and do not represent those of Ceramic Industry, its staff, Editorial Advisory Board or BNP Media.