New patent examination initiative in the US helps applicants deal with ‘tricky’ patent examiners

Sometimes, patent examiners can be a little stubborn.  And, let’s be honest, patent applicants are no better.  What that means is that sometimes examination can get bogged down in an unfortunate stalemate.  Traditionally, the favoured approach for resolving such a situation involves a lengthy (and often costly) formal appeal process.

On 11 July 2016, the USPTO commenced a new pilot program called the Post-Prosecution Pilot Program (“P3”). This program provides an alternative to filing a formal appeal during prosecution of a US patent application.

In short, the P3 program provides a US patent applicant the opportunity to be heard by a three-examiner panel (in a 20 minute discussion) about the rejections that have been raised against the application. Such an open discussion with examiners was not available with the Pre-Appeal Program. Perhaps more importantly, under the P3 program the applicant receives substantive feedback from the panel.

To be eligible for the P3 program, the patent application must have received an Office Action with a final rejection. A request for consideration under the P3 program must:

  • Be filed within two months of the mailing date of the Office Action containing the final rejection;
  • Be accompanied by a submission of arguments of no more than five pages and optionally a proposed non-broadening claim amendment; and
  • Include a statement that the applicant is willing and available to participate in the conference within 10 days from when contacted by the Office.

There is no fee required to request consideration under the P3 program.

The outcome of the P3 program is a Notice of Decision which will indicate one of the following: (a) upholding the original examiner’s point of view (b) determining that the application should be allowed; or (c) prosecution return to Examination with additional feedback and directions for both sides.

This is a limited-time offer, with the program running from 11 July 2016 to 12 January 2017 (six months) or the date the Office accepts 1,600 compliant requests, whichever comes first.  In addition, each Technology Center within the USPTO can accept no more than 200 compliant requests, meaning a Technology Center might close out of the program before the P3 program ends for the entire Office.