March, 10th, 2017

By Benjamin N. Luehrs and Robert D. Keeler

On January 12, 2017, the USPTO’s Post-Prosecution Pilot (P3) Program concluded its six-month term, having accepted over 1,500 applications. P3’s aim was (1) to increase communication between applicants and examiners and (2) reduce appeals and requests for continued examination (RCEs).[1] All signs indicate the program achieved its objectives and should be extended.

P3 sought to improve upon two other post-final rejection programs, namely the After Final Consideration (2.0) Program and the Pre-Appeal Brief Conference Program. P3 provided the benefit of having a panel of examiners – i.e., primary examiner and supervisor – review the application like in the Pre-Appeal pilot program, but did not require the filing of a Notice of Appeal and associated official fee. P3 differed from both programs in that amendments were optional.[2] It also gave applicants an opportunity to make an oral presentation to the panel and explain the differences between the invention and cited prior art.

The P3 panel review was its greatest asset. During prosecution, an applicant and an examiner may become entrenched in their own perspectives and opinions regarding the application and the art. Such gridlock ends productive discourse between the Patent Office and the applicant and cripples the application process. The results of P3 illustrate that including additional perspectives from the panel conference is highly beneficial. For instance, approximately 40 percent of P3 requests resulted in allowance or a reopening of prosecution without an RCE.[3] P3 and its panel review thus offer a substantial benefit to the prosecution process.

The benefits of P3 are not confined to prosecution outcomes. Recent data suggests that P3 also helped accelerate the reduction in the USPTO’s RCE backlog. During the program’s implementation, the backlog was reduced by over 3,000 applications. The backlog was reduced by only 1,000 applications during the same period the year before.

WHIPgroup took full advantage of P3, achieving a substantially higher success rate than others in the program. Thirty percent (30%) of WHIPgroup’s P3 requests resulted in a notice of allowance. Another thirty percent (30%) resulted in reopened prosecution, which more than doubled the program-wide rate (7 – 14 percent).[4] In absence of P3, these cases would have been appealed or required an RCE.

As the evidence attests, P3 proved to be an asset to WHIPgroup clients, the USPTO and the prosecution process. WHIPgroup urges the USPTO to extend this successful program.

WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.

[1] Federal Register, Vol. 81, No. 132 (July 11, 2016).

[2] The After Final Consideration Program requires a non-broadening amendment to an independent claim. Amendments are not allowed in the Pre-Appeal Program.

[3] The most recent data includes analysis of approximately 1400 P3 applications. See Ovanezian & Noel, Results of USPTO Post-Prosecution Pilot Look Promising (available at https://www.law360.com/articles/896969/results-of-uspto-post-prosecution-pilot-look-promising).

[4] Id.

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