Post-Prosecution Pilot

The Post-Prosecution Pilot (P3) Program, which is a Patent Quality evolving program, was developed to test its impact on improving patent practice during the period subsequent to final rejection and prior to the  filing of a notice of appeal.  Effective features of two programs currently aimed at improving this area of prosecution, (1) the After Final Consideration Pilot (AFCP) 2.0 program and (2) the Pre-Appeal Brief Conference Pilot program, have been incorporated into a single program that adds new, requested features, such as providing applicants an opportunity to present arguments to a panel at a conference.

The P3 Program is an important step towards improving excellence in customer service.  For an announcement of the Post-Prosecution Pilot Program, please refer to the July 2016 Federal Register Notice.  

Pilot Duration

The Post-Prosecution Pilot begins on July 11, 2016, and will run for 6 months or when 1,600 requests have been accepted into the Pilot, whichever comes first.  Each individual technology center will accept no more than 200 compliant requests, meaning that the P3 may close with respect to an individual technology center that has accepted 200 compliant requests, even as it continues to run in other technology centers that have yet to accept 200 compliant requests.

** P3 submissions are no longer being accepted under this pilot as of January 12, 2017 **

Requests Received by Technology Center (updated as of January 11, 2017)

 TC 1600 - 141
 TC 1700 - 200 "TC limit reached - No longer accepting requests"   
 TC 2100 - 200 "TC limit reached - No longer accepting requests"
 TC 2400 - 200 "TC limit reached - No longer accepting requests"
 TC 2600 - 200 "TC limit reached - No longer accepting requests"
 TC 2800 - 200 "TC limit reached - No longer accepting requests"       
 TC 3600 - 200 "TC limit reached - No longer accepting requests"    
 TC 3700 - 200 "TC limit reached - No longer accepting requests"


P3 Participation

The P3 is open to nonprovisional and international, utility applications filed under 35 USC 111(a) or 35 USC 371 that are under final rejection.  Reissue, design and plant applications, as well as reexamination proceedings, are not eligible to participate in the P3.  The following is required for entry into the pilot:

  • A Request Form ("Certification and Request for Consideration under the Post-Prosecution Pilot Program (P3)") filed via EFS-Web within two months of the mailing date of the final rejection and prior to filing a notice of appeal.
  • A statement [contained within the Request Form] that the applicant is willing and available to participate in a P3 conference with the panel of examiners;
  • A response comprising no more than five (5) pages of arguments under 37 CFR 1.116 to the outstanding final rejection, exclusive of any amendments; and
  • Optionally, a proposed non-broadening amendment to one or more claim(s).
     

P3 Requirements

  • There is no fee to participate in the P3.
  • Applicant cannot have previously filed a proper request to participate in the Pre-Appeal or the AFCP 2.0 programs in response to the same outstanding final rejection.
  • Once a P3 Request has been accepted, no additional response(s) under 37 CFR 1.116 will be entered, unless requested by the examiner.  
  • It is also impermissible to request to participate in the Pre-Appeal program or request consideration under AFCP 2.0 once a P3 request has been accepted.
 

P3 Compliance 

All P3 Requests will be considered for timeliness and compliance before entry into the pilot

A.      For Requests considered untimely or otherwise non-compliant (or if filed after the technology center has reached its limit of P3 Requests):

  • The Office will treat the Request as in the same manner it would treat any after final response absent the P3 Request. 
    • No conference will be held. 
  • The next communication issued by the Office will indicate:
    • the reason why the P3 request was found to be untimely or otherwise non-compliant;
    • the result of the treatment under 37 CFR 1.116 of the response and any proposed amendment; and
    • the time period for the applicant to take further action.

B.       For Requests considered timely and compliant, the Office will enter the application into the pilot process.
 

Pilot Process

  1. The Office will contact the applicant to schedule the P3 conference.  Such contact should result in a P3 conference within ten calendar days of the initial contact with the applicant or the P3 Request could be considered improper at that time.
  2. The applicant will make an oral presentation to the panel of examiners, with such participation being limited to 20 minutes:
           a)    Any materials used by the applicant will be placed in the file.  Entry of claim amendments, affidavits or other evidence included as part of the presentation materials is governed by 37 CFR 1.116.  See MPEP 714.12.
           b)    Applicant may present on appealable, but not petitionable, matters.
           c)     Applicant may present arguments directed to the outstanding record or the patentability of the amended claim(s) as proposed.
  3. After applicant’s presentation, the panel will confer.
  4. The applicant will be informed of the panel’s decision, in writing, following complete consideration of the P3 Request.
  5. The P3 process will be terminated if applicant files any of the following after the filing of the P3 Request but prior to a notice of decision from the panel:
    •     A notice of appeal
    •     A Request for Continued Examination (RCE)
    •     An express abandonment under 37 CFR 1.138
    •     A request for the declaration of interference or
    •     A petition requesting the institution of a derivation proceeding
     

Notice of Decision

The applicant will be informed of the panel’s decision in writing via a Notice of Decision from Post-Prosecution Pilot Program (P3) Conference (PTO-2324).  One of three outcomes will be indicated:

A.       Final Rejection Upheld

  • If proposed amendment(s) were included with the P3 Request, the status of such amendment(s) will be communicated.
  • The time period for taking further action in response to the final rejection expires on (1) the mailing date of the notice of decision; or (2) the date set forth in the final rejection, whichever is later. To avoid abandonment, the applicant must file a notice of appeal or RCE within the statutory period for response to the final rejection. Extensions of time may be obtained under 37 CFR 1.136(a), but the period for response may not be extended beyond the six-month statutory period for response.
  • The decision is not petitionable, and the Office will not grant a petition seeking reconsideration of a panel decision upholding a final rejection.

B.       Allowable Application

  • A notice of decision indicating “allowable application” will be mailed concurrently with a Notice of Allowance.

 ​C.       Reopen Prosecution

  • A notice of decision indicating “reopen prosecution” will state that the rejection(s) is/are withdrawn and a new Office action will be mailed.
     

Comments

Formal comments about the P3 Program will be accepted through November 14, 2016 as noted in the July 2016 Federal Register Notice via AfterFinalPractice@uspto.gov.  All submissions will be available for review after the comment period has passed.

P3 External Survey

If you have submitted a P3 request, please take the P3 External survey (link is external)

Frequently Asked Quaestions (FAQs) 

Frequently Asked Questions (FAQs) 
P3 External FAQ Sept 23 2016.pdf

Resources

Examiner Training
 

 

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