Client Alert | 07.19.16

USPTO offers a new tool for responding to Final Office Actions Post-Prosecution Pilot (P3) Program

On July 11, 2016, the United States Patent and Trademark Office (USPTO) introduced a new program, the Post-Prosecution Pilot (P3) Program, for responding to a Final office action rejection in a patent application. The goal of the P3 program is to increase the value of after final practice, reduce the number of RCEs, and reduce the number of appeals to the PTAB.

Participation in the P3 program requires filing a response to an outstanding final rejection within two (2) months of the mailing date of the final rejection, where the response contains no more than 5 pages of arguments, a statement that the applicant is willing and available to participate in a conference with examiners, and a properly filled P3 request form.  There is no fee to participate in the P3 program.

Once a P3 request is properly submitted, 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. Applicant can participate in the conference in person, by telephone, or by a video conference. Following the conference, the panel of examiners decides on the fate of the application, which is one of the following: (1) final rejection upheld; (2) allowable application; or (3) reopen prosecution.

The P3 program is different from the currently available courses of action in response to a final office action, where only the examiner of record (and not a panel of examiners) decides the fate of the pending application, and where the examiner does not usually confer with the applicant before deciding the fate of the application. This program offers a new tool for responding to final office actions, and brings examiners and applicants together to reach an agreement.

For more information about the P3 program, and whether P3 participation might be helpful for your patent application, please contact Sean Senn, Priti Phukan, or any other attorney in Archer Norris’s Intellectual Property Group.

Name Title Phone Email V-card
Phukan, Priti Associate 213.438.4307 vcard
Senn, Sean Partner 213.437.4000 vcard