USPTO Adds New Pilot Program – Combines Features of Pre-Appeal Conference & After-Final 2.0 Program with goal of compacting prosecution

One of the more frustrating aspects of securing U.S. patent protection is the process of prosecuting a patent application after it has been drafted and filed. “Patent prosecution” is an administrative process of the United States Patent & Trademark Office (USPTO) encompassing the interaction between patent examiners and technical innovators (patent applicants and their attorneys or agents) to determine how broad or narrow the scope of protection is in a given case.

When managed improperly, patent prosecution is unnecessarily time-consuming, frustrating and expensive. We recognize patent prosecution inefficiencies and high overhead are the norm for most large firms. Not at Maier & Maier, PLLC. We have always worked directly with examiners to provide our clients with the most compact and cost- effective patent prosecution. Working as partners with the Examiners includes developing close personal relationships by meeting with them, in most cases, face-to-face, to resolve issues and to try to arrive at mutually agreeable claim language for the benefit of our clients. Last week, the USPTO announced a new pilot program that is inherent with our founder’s philosophy, to provide high quality efficient services to our clients, the Post-Prosecution Pilot Program (P3).

On July 11, the USPTO unveiled its Post-Prosecution Pilot Program (“P3”), which is scheduled to remain in effect until January 12, 2017, or until the number of P3 requests exceeds 1600, whichever occurs first. The goal of P3 is to reduce the number of appeals and the number of Requests for Continued Examination; the P3 incorporates features from existing pilot programs and adds new features to accomplish the goal.

The P3 provides for:

  1. after-final responses to be considered by a panel of examiners (a feature carried over from the Pre-Appeal Brief Conference Pilot Program),
  2. optional proposed amendments (a feature carried over from the After Final Consideration Pilot Program 2.0), and
  3. an opportunity for the applicant to make an oral presentation to the panel of examiners (new feature).

To participate in the P3, an application must contain an outstanding final rejection.P3 requests, which must be filed within two months from the mailing date of a final rejection and prior to filing a notice of appeal, must include:

  1. a transmittal form, such as PTO/SB/444, identifying the submission as a P3 submission;
  2. a response under 37 CFR 1.116 comprising no more than 5 pages of argument; and
  3. a statement that the applicant is willing and available to participate in the conference with the panel of examiners.

The oral presentation, which will be limited to 20 minutes, may be given in person, by telephone, or by a video conferencing tool set up by the USPTO.

The P3 request may optionally include proposed non-broadening amendments. Applications in which requests to participate in the Pre-Appeal program or AFCP 2.0 have been submitted in response to the same outstanding final rejection are not eligible for the P3. Presently, no fee is required to request consideration under the P3. If a P3 request is granted and a panel is convened, the panel decision will be communicated in the form of a brief written summary. Since the new program is capped at 1600 requests, it may be beneficial to review cases with final rejections not older than 2 months and consider filing a P3 request before the pilot period ends.

The USPTO created P3 to provide more direct feedback to stakeholders by allowing them to participate in a panel discussion with examiners after a final rejection. With this most recent pilot program, the USPTO is validating the internationally known and respected Maier & Maier, PLLC philosophy. That is, direct communication and close working relationships with examiners are paramount in patent prosecution.

Category: Firm News