The United States Patent and Trademark Office’s new pilot program provides patent applicants with a valuable tool to efficiently and inexpensively advance prosecution after a final office action.

The Patent Office recently announced its Post-Prosecution Patent Program, or P3 for short. P3 went into effect the same day, and now provides patent applicants with an opportunity to meaningfully advance prosecution after a final rejection without necessitating an appeal or Request for Continued Examination (RCE). P3 allows:

• A substantive response within two months after a final rejection
• Non-broadening amendments
• Oral arguments
• Consideration by a three-examiner panel

P3’s stated goal is to improve after final practice and to reduce the number of appeals and RCEs. The detailed participation requirements have their benefits and drawbacks. For many applications, however, P3 will present a valuable opportunity to advance prosecution without requiring the expense and delay of an appeal or continued examination. Applicants must specifically file a request to participate in the program, and must state that they are willing and able to participate in a conference with the panel. No fee is required. Applicants must also submit arguments responding to the final rejection, and those arguments are limited to five pages—but single spacing is permitted. As with the existing Pre-Appeal Brief program, the page limit will likely make the P3 program an excellent opportunity for an applicant to present a pointed argument to a panel prior to an appeal. However, applications with complex technology or with several issues that need to be resolved to overcome a final rejection may not be ideal candidates for the program.

The opportunity to amend claims presents applicants with a significant benefit over the existing Pre-Appeal Brief program. The amendments cannot broaden the scope of the claims in any aspect, but may be an effective tool to clarify the scope of the claims to place the applicant in condition for allowance. Given the single, limited opportunity to present oral arguments with the panel, limited arguments that clarify or narrow a single independent claim may fare best under P3.

The opportunity to present oral arguments in a conference will also benefit applicants over the current procedures. The applicant’s participation in the conference is limited to 20 minutes, but that can present the applicant with a significant opportunity to clarify any aspects of the argument that remain unclear from the briefing. We expect it may also present the applicant and panel with a valuable forum to agree on minor claim amendments to put the application in condition for allowance.

P3 provides another valuable tool patent practitioners can leverage to advance prosecution after a final rejection. The pilot will run until January 12, 2017, but is limited to only 200 compliant requests per technology center. We expect this to be a popular program, and would not be surprised if some technology centers close the program long before January.

Client Alert 2016-198