Patent Office announces Post-Prosecution Pilot Program

By Gene Quinn
July 11, 2016

uspto-globeEarlier today the United States Patent and Trademark Office published a Notice in the Federal Register announcing a new pilot program for applications that have received a final rejection.  The Post-Prosecution Pilot Program, or P3 as the Patent Office is calling it for short, will to test the impact on enhancing patent practice during the period subsequent to a final rejection and prior to the filing of a notice of appeal.

The Post-Prosecution Pilot Program will run from July 11, 2016, through January 12, 2017, or the date the Patent Office has accepted a total of 1,600 compliant requests, whichever occurs first.

According to the Patent Office, this Post-Prosecution Pilot Program responds to stakeholder input gathered during public forums held in support of the Enhanced Patent Quality Initiative.

Post-Prosecution Pilot Program

Under the Post-Prosecution Pilot Program, a panel of examiners, including the examiner of record, will hold a conference with the applicant to review the applicant’s response to the final rejection of record. In order to participate in the Post-Prosecution Pilot Program, the applicant will be required to file a request for consideration within two months from the mailing date of a final rejection and prior to filing a notice of appeal, together with a response to the final rejection and a statement that the applicant is willing and available to participate in the conference. The applicant will have the option of including in the response a proposed non-broadening amendment to a claim(s).

The Patent Office hopes that by giving the applicant the opportunity to provide an oral presentation to the panel during a conference with the examiners, as well as providing written explanation, issues can be resolved without need for an appeal. Indeed, the goal for this Post-Prosecution Pilot Program is to hopefully reduce the number of appeals take to the Patent Trial and Appeal Board (PTAB), or at the very least reduce the number of issues that are appealed. It is also believed that the program will impact the number of request for continued examination (RCE) filings as well.

More specifics relating to participation, response, proposed amendments, timing and the conference are provided in the Federal Register Notice.

USPTO Seeks Comments

The Patent Office explains that they have three main goals for the Post-Prosecution Pilot Program: (1) Increase the value of after final practice; (2) reduce the number of appeals and the issues to be taken on appeal to the PTAB and the number of RCEs; and (3) streamline the options available to an applicant during after final practice.

The Office is requesting public comment and other suggestions to improve after final practice and reduce the number of appeals and issues taken up for appeal to the PTAB, as well as the number of RCEs. The Patent Office plans to evaluate the public feedback and the balance between the degree to which the pilot program achieves its goals and the examining resources it expends. The Patent Office also says they will provide advance notification before modifying and/or extending the pilot program or making it permanent.

Comments should be sent by electronic mail message over the Internet addressed to: afterfinalpractice@uspto.gov. Comments may also be submitted by postal mail addressed to: United States Patent and Trademark Office, Mail Stop Comments—Patents, Office of Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Raul Tamayo. Although comments may be submitted by postal mail, the Office prefers to receive comments by electronic mail message over the Internet in order to facilitate posting on the Office’s Internet Web site.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 1 Comment comments.

  1. Curious July 11, 2016 5:26 pm

    Interesting pilot program. It is basically a guaranteed after-final interview (after you file a 5-page response) with the Examiner and others (unknown has to how many “others”).

    That being said, it would be nice if they gave us a little more notice. The Notice was issued today and the program starts today. Each Tech Center can accept 200 requests. Unlike some of the USPTO’s other pilot programs, I expect this to be one that will be taken advantage of. As such, the limit of 200 could be reached fairly quickly.