U.S. Patent and Trademark Office Releases Post-Submission Pilot Program

Nanjing Hua News: Starting from July 11, 2016, the United States Patent and Trademark Office ("USPTO") has launched the "P3" (Post Prosecution Pilot) pilot program, allowing applicants to conduct an oral examination with the examiner panel after receiving the final examination opinion of the US utility patent application. The P3 pilot program combines two existing post-final review ("After Final") programs to test the impact of strengthening patent practices in the time period after final rejection and before filing notice of appeal. The advantage of participating in this programme is to increase the chances of authorization without the additional cost and time to file an appeal or request for continued review.

(Notice of Appeal Charges US $400, Small Business Charges US $1000 for Forwarding Appeal Complaints to the Patent Trial and Appeal Committee; Request for continued review is "Request for Continued Examination", referred to as "RCE". Small businesses charge US $600 for the first time and US $850 for the second and subsequent times)

Patent applicants who wish to participate in the P3 pilot process are required to submit the following documents:

A pleadings request form, such as PTO/SB/444, which can identify the submission as a P3 submission and require the use of P3 for consideration;

A response, including the argument, not exceeding 5 pages (without any modifications), submitted pursuant to Section 1.116 of Part I of the United States Manual of Patent Examination Procedures;

The applicant can and is willing to participate in the declaration of a collegiate group composed of three examiners; and (optional) make non-expanding amendments to at least one claim.

Nanjing Huaxun believes that it is worth noting that the P3 request must be submitted within two months after receiving the final review opinion. This procedure will continue until January 12, 2017 or the receipt of 1600 petitions, whichever comes first. Each patent examination technology center only accepts 200 requests, which means that for a technology center, the P3 program may be terminated in advance by January 12, 2017 or before a total of 1600 complaint applications are received.

If a request is received that does not satisfy the above, the USPTO will treat the request as a regular request after the final response and issue a proposal (indicating that the application cannot be authorized) or an authorization notice. The applicant may file a notice of appeal or an RCE to continue the review.

If an eligible request is received, the USPTO will contact the applicant to schedule a P3 meeting. If the applicant does not schedule this meeting within 10 days, the USPTO may remove the applicant from the P3 program.

After the meeting time is fixed, the supervising patent examiner (Supervisory the Patent Examiner, or "SPE") (preferably the examiner in the examiner's record in the case) will arrange for a panel with experience in the relevant technology to review the response submitted with the P3 request. This collegiate panel can include the reviewer, SPE, or principal reviewer in the reviewer record (if the reviewer on the reviewer record is a junior reviewer, the principal reviewer signed in the reviewer record is preferred). Meetings do not have to be attended in person, but can be conducted by phone or video to reduce travel costs and save time.

The decision of the collegiate panel will be communicated to the applicant in writing by mailing a notice of decision from the P3 meeting. The decision notice will indicate one of the following decisions: (a) to uphold the final dismissal; (B) to authorize the application; or (c) to re-prosecute. Where appropriate, the proposed amendment may appear in the notice of decision proposing the change, which, if accepted by the applicant, would allow the application to be adopted.

It should be noted that there are two other feasible options after similar final review. Final Review Pilot Program 2.0(After Final Consideration Pilot 2.0 "AFCP"). AFCP gives examiners additional time to retrieve and review responses submitted after final rejection. According to AFCP2.0, if the response does not make the application authorized, the examiner will use the additional time to arrange and conduct an interview with the applicant to discuss the results of the examiner's search and consideration. In this way, the applicant can benefit from the additional search and consideration brought about by the pilot program, even if these results do not lead to authorization.

The request for pre-appeal briefing ("Pre-Appeal Brief Request for Review") allows the applicant to submit a maximum of five pages of argument, and then the USPTO organizes a panel similar to the P3 program and issues a decision to continue the appeal, or a notice of authorization, or a re-prosecution shortly thereafter. Nanjing Huaxun suggested that this request must be submitted at the same time as the notice of appeal.

According to public reports, AFCP is currently the most useful of the three programs, with a 30% authorization rate. Pre-appeal briefing requests have an authorization rate of only 16%. Since the P3 option is a merger of two other post-final review notifications, this option may potentially have a higher authorization rate, but it remains to be tested over time.