USPTO announces Post-Prosecution Pilot Program


Earlier this month, 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 will run from July 11, 2016, through January 12, 2017, or until 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. The goal is to provide another opportunity for applicants and examiners to attempt to resolve disputes without requiring an appeal or the filing of a Request for Continued Examination (RCE).

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 proposed non-broadening amendment(s) to 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 reduce the number of appeals taken 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 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 that they will provide advance notification before modifying and/or extending the pilot program or making it permanent.

Comments should be sent by email to 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. But email is preferred.

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