Post-Prosecution Pilot Program, 44845-44849 [2016-16423]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office

[Federal Register Volume 81, Number 132 (Monday, July 11, 2016)]
[Notices]
[Pages 44845-44849]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-16423]


-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No. PTO-P-2016-0012]


Post-Prosecution Pilot Program

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice; request for comment.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (Office) is 
initiating a Post-Prosecution Pilot Program (P3) to test its impact on 
enhancing patent practice during the period subsequent to a final 
rejection and prior to the filing of a notice of appeal. This Pilot 
Program responds to stakeholder input gathered during public forums 
held in support of the Enhanced Patent Quality Initiative. Under the 
P3, 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 P3, the 
applicant will be required to file a request for consideration under 
the P3 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 Office designed the P3 to increase the value of 
after final practice by (1) leveraging applicant input obtained through 
an oral presentation during a conference with a panel of examiners, and 
(2) also providing written explanation for the panel decision. The P3 
is also designed to reduce the number of appeals and issues to be taken 
up on appeal to the Patent Trial and Appeal Board (PTAB), and reduce 
the number of Requests for Continued Examination (RCE), and simplify 
the after final landscape. This notice identifies requirements and 
procedures of the P3, which will govern entry into, and practice under, 
the P3. This notice also solicits public comments on the P3 and other 
suggestions to improve after final practice and reduce the number of 
both appeals to the PTAB and RCEs.

DATES: Effective Date: July 11, 2016.
    Duration: The P3 will accept requests beginning July 11, 2016, 
until either January 12, 2017, or the date the Office accepts a total 
(collectively across all technology centers) of 1,600 compliant 
requests to participate under the P3, whichever occurs first. Each 
individual

[[Page 44846]]

technology center will accept no more than 200 compliant requests, 
meaning that the P3 may close with respect to an individual technology 
center that has accepted 200 compliant requests, even as it continues 
to run in other technology centers that have yet to accept 200 
compliant requests.
    Comment Deadline Date: Written comments must be received on or 
before November 14, 2016.

ADDRESSES: 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 comments will be available for public inspection at the Office 
of the Commissioner for Patents, located at Madison Building East, 
Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also 
will be available for viewing via the Office's Internet Web site 
(https://www.uspto.gov). Because comments will be made available for 
public inspection, information that is not desired to be made public, 
such as an address or phone number, should not be included in the 
comments.

FOR FURTHER INFORMATION CONTACT: Raul Tamayo, Senior Legal Advisor 
(telephone (571) 272-7728; electronic mail message 
(raul.tamayo@uspto.gov)), Kery Fries, Senior Legal Advisor (telephone 
(571) 272-7757; electronic mail message (kery.fries@uspto.gov)), or 
Jeffrey West, Legal Advisor (telephone (571) 272-2226; electronic mail 
message (jeffrey.west@uspto.gov)). Alternatively, mail may be addressed 
to Raul Tamayo, Office of Commissioner for Patents, Attn: Post-
Prosecution Pilot Program, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: 

I. Background

    Since 2005, the Office has administered the Pre-Appeal Brief 
Conference Pilot Program (Pre-Appeal program), which provides an avenue 
for a patent applicant to request a review of the basis of a 
rejection(s) in a patent application prior to the filing of an appeal 
brief. See New Pre-Appeal Brief Conference Pilot Program, 1296 Off. 
Gaz. Pat. Office 67 (July 12, 2005). Specifically, when an applicant 
files a notice of appeal together with a request to participate in the 
Pre-Appeal program, a panel of examiners (including the examiner of 
record) formally reviews the rejections of record in light of the 
remarks provided in the request. The Pre-Appeal program benefits both 
the applicant and the Office. For example, if the panel's review 
determines that the application is not in condition for appeal, the 
applicant can save the time and expense of preparing an appeal brief, 
and the Office can save resources associated with an appeal to the 
PTAB.
    Since 2013, the Office has administered the After Final 
Consideration Pilot Program 2.0 (AFCP 2.0). See After Final 
Consideration Pilot Program 2.0, 78 FR 29117 (May 17, 2013). Under AFCP 
2.0, examiners consider a response filed after a final rejection 
pursuant to 37 CFR 1.116 that includes remarks and amendments that may 
require further search and consideration, provided that at least one 
independent claim includes a non-broadening amendment. The examiner 
also may conduct an interview with the applicant when the response does 
not place the application in condition for allowance. A goal of AFCP 
2.0 is to reduce pendency by reducing the number of RCEs and 
encouraging increased collaboration between the applicant and the 
examiner to effectively advance the prosecution of the application.
    The P3 program implemented through this notice combines effective 
features from the Pre-Appeal and AFCP 2.0 programs with new features. 
For example, the P3 provides for (i) an after final response to be 
considered by a panel of examiners (Pre-Appeal), (ii) an after final 
response to include an optional proposed amendment (AFCP 2.0), and 
(iii) an opportunity for the applicant to make an oral presentation to 
the panel of examiners (new). Finally, the panel decision will be 
communicated in the form of a brief written summary. Section II of this 
notice provides a more complete identification of the requirements and 
procedures of the P3. This notice does not discontinue either the Pre-
Appeal or AFCP 2.0 pilot programs.

II. P3 Participation Requirements and Procedures

A. P3 Participation Requirements

    To be eligible to participate in the P3, an application must 
contain an outstanding final rejection and be (i) an original utility 
non-provisional application filed under 35 U.S.C. 111(a), or (ii) an 
international utility application that has entered the national stage 
in compliance with 35 U.S.C. 371 (see 37 CFR 1.491). A continuing 
application (e.g., a continuation or divisional application) is filed 
under 35 U.S.C. 111(a) and is thus eligible to participate in the P3. 
Reissue, design, and plant applications, as well as reexamination 
proceedings, are not eligible to participate in the P3.
    A request for a response under 37 CFR 1.116 to be considered under 
the P3 must include the following items: (1) A transmittal form, such 
as form PTO/SB/444, that identifies the submission as a P3 submission 
and requests consideration under the P3; (2) a response under 37 CFR 
1.116 comprising no more than five pages of argument; and (3) a 
statement that the applicant is willing and available to participate in 
the conference with the panel of examiners. Optionally, a P3 request 
may include a proposed non-broadening amendment to a claim(s).
    Only one P3 request will be accepted in response to an outstanding 
final rejection. If prosecution is reopened and the Office subsequently 
issues a new final rejection, the filing of a P3 request in response to 
the new final rejection is permitted. Once a P3 request has been 
accepted in response to a final rejection, no additional response under 
37 CFR 1.116 to the same final rejection will be entered, unless the 
examiner has requested the additional response because the examiner 
agrees that it would place the application in condition for allowance.
    There is no fee required to request consideration under the P3. All 
papers associated with a P3 request must be filed via the USPTO's 
Electronic Filing System-Web (EFS-Web).
    To be eligible to participate in the P3, an applicant cannot have 
previously filed a proper request to participate in the Pre-Appeal 
program or a proper request under AFCP 2.0 in response to the same 
outstanding final rejection, and once a P3 request is accepted, neither 
a request to participate in the Pre-Appeal program nor a request for 
consideration under AFCP 2.0 will be accepted for the same outstanding 
final rejection.
1. Timing of the P3 Request
    A P3 request must be filed within two months from the mailing date 
of a final rejection and prior to filing a notice of appeal. A P3 
request will be deemed untimely if it is filed (i) more than two months 
from the mailing date of the final rejection, (ii) in an application 
that does not contain an outstanding final

[[Page 44847]]

rejection (e.g., a P3 request will not be accepted in response to a 
second action non-final rejection), (iii) in response to a final 
rejection for which a proper AFCP 2.0 request has been filed, (iv) on 
or after the date a RCE or notice of appeal is filed in response to the 
same outstanding rejection, or (v) on or after the date an express 
abandonment is filed. For information on how the Office will process an 
untimely P3 request, refer to Section II.B.1 of this notice. For 
information on how a P3 request will be treated if a RCE, notice of 
appeal, or express abandonment is filed subsequent to the filing of the 
P3 request, but prior to a decision on the P3 request, refer to Section 
II.B.4 of this notice.
2. Transmittal Form
    A P3 request must include a transmittal form. The Office advises 
the use of form PTO/SB/444, which is available at https://www.uspto.gov/forms/index.jsp, as the transmittal form. Use of form PTO/SB/444 will 
help the Office to quickly identify P3 requests and facilitate timely 
processing. In addition, form PTO/SB/444 will help applicants 
understand and comply with the requirements and procedures of the P3. 
Under 5 CFR 1320.3(h), form PTO/SB/444 does not collect ``information'' 
within the meaning of the Paperwork Reduction Act of 1995.
3. Response Under 37 CFR 1.116
    A P3 request must include a response under 37 CFR 1.116. The 
response must be a separate paper from the transmittal form, and must 
comprise no more than five pages of arguments. Arguments are limited to 
appealable, not petitionable, matters (e.g., an argument that the final 
rejection was premature is a petitionable matter--see MPEP Sec.  
706.07(c)). The Office considers arguments as encompassing, e.g., 
conclusions, definitions, claim charts, and diagrams. If the applicant 
opts to include a proposed amendment in the response under 37 CFR 
1.116, as further discussed at Section II.A.5 of this notice, arguments 
presented in the response may be directed to the patentability of the 
proposed amended claim(s). The sheet(s) of the response containing a 
proposed amendment will not count towards the five-page limit. If the 
applicant opts to include an affidavit or other evidence as part of the 
response, entry of the affidavit or other evidence will be governed by 
37 CFR 1.116. See MPEP 714.12. In addition, the affidavit or other 
evidence will count towards the limit of no more than five pages of 
arguments.
    Form PTO/SB/444, or an equivalent transmittal that does not include 
arguments, will not count towards the five-page limit. Additionally, a 
page of the response that consists solely of, for example, a signature 
will not be counted toward the five-page limit. Thus, for example, a 
response that includes five pages of arguments and a sixth page that 
includes conclusions and/or definitions would be treated as exceeding 
the five-page limit. Furthermore, an applicant may not circumvent the 
five-page limit by filing arguments in multiple separate documents. For 
example, if an applicant files one document containing five pages of 
arguments and an additional document containing arguments, the two 
documents will be considered together to ascertain whether the five-
page limit has been exceeded.
    The response may be single spaced, but must comply with the 
requirements of 37 CFR 1.52(a). Additionally, the response may refer to 
an argument already of record rather than repeat the argument. This 
should be done by referring to the location of the argument in a prior 
submission and identifying the prior submission by title and/or date 
(e.g., see the argument at pages 4-6 of the paper titled ``Applicant's 
Response to Final Office Action'' filed on October 1, 2015). A 
reference to ``the arguments of record'' or ``the paper dated X'' 
without a pinpoint citation will not be considered under the P3.
4. Conference Participation Statement
    The P3 request must include a statement by the applicant that the 
applicant is willing and available to participate in the conference 
with the panel of examiners. Form PTO/SB/444 includes the required 
conference participation statement.
    After the Office initially verifies that a P3 request is timely and 
compliant, as further discussed at Section II.B.1 of this notice, the 
Office will contact the applicant to schedule the conference. If within 
ten calendar days from the date the Office first contacts the 
applicant, the Office and the applicant are unable to agree on a time 
to hold the conference, or the applicant declines to participate in the 
conference, the request will be deemed improper and treated in 
accordance with the discussion at Section II.B.1 of this notice.
    The applicant may participate in the conference in-person, by 
telephone, or by a video conferencing tool set up by the Office, such 
as WebEx[supreg]. The conference will permit the applicant to present 
to the panel of examiners in a manner similar to how an applicant 
presents an argument in an ex parte appeal before the PTAB. The 
applicant's participation in the conference will be limited to 20 
minutes.
    The applicant should advise the Office of any special needs as soon 
as possible before participating in a conference. Examples of such 
needs include an easel for posters or a projector. The applicant should 
not make assumptions about the equipment the Office may have on hand 
for the conference. Section II.B.2 of this notice provides more 
information regarding the applicant's participation in the conference.
5. Option To Propose Amendment
    The response under 37 CFR 1.116 included with a P3 request 
optionally may include a proposed amendment to a claim(s). Entry of any 
proposed amendment after a final Office action is governed by 37 CFR 
1.116. See MPEP 714.12. In addition, a proposed amendment under the P3 
may not broaden the scope of a claim in any aspect. For the purposes of 
the P3, the analysis of whether a proposed amendment to a claim 
impermissibly would broaden the scope of the claim will be analogous to 
the guidance set forth in section 1412.03 of the MPEP for determining 
whether a reissue claim has been broadened.
    A proposed amendment that focuses the issues with respect to a 
single independent claim is the type of proposed amendment that 
provides the best opportunity for leading to the application being 
placed into condition for allowance. A proposed amendment that contains 
extensive amendments (either in terms of the nature of the amendment or 
number of claims to be amended) probably will require extensive further 
consideration and thus likely would not be effective to place the 
application in condition for allowance. Extensive amendments will be 
considered only to the extent possible under the time allotted to the 
examiner under the P3.
    The sheet(s) of the response containing a proposed amendment will 
not count towards the five-page limit discussed at Section II.A.3 of 
this notice. In accordance with 37 CFR 1.121(c)(1), the sheet(s) of the 
response containing the proposed amendment may not contain arguments.

B. P3 Procedures

1. Technology Center Review
    After receipt of a P3 request, the relevant technology center will 
review the request to verify that it is timely, includes a transmittal 
form, a response under 37 CFR 1.116 comprising no more

[[Page 44848]]

than five pages of arguments (exclusive of any proposed amendment), and 
the conference participation statement, and otherwise complies with the 
requirements of the P3 set forth at Section II.A of this notice. If the 
request is timely and compliant, the technology center will contact the 
applicant to schedule the conference.
    If the review finds that the request is untimely or otherwise fails 
to comply with the requirements of the P3, a conference will not be 
held. The response and any proposed amendment filed with the request 
will be treated under 37 CFR 1.116 in the same manner as any non-P3 
response to a final rejection (except that if the request fails to 
comply because a P3 request previously has been accepted in response to 
the same final rejection, the response and any proposed amendment will 
be entered only if the examiner requests them, as mentioned earlier at 
Section II.A of this notice). The next communication issued by the 
Office will indicate the reason that the request was found to be 
untimely or otherwise non-compliant, the result of the treatment under 
37 CFR 1.116 of the response and any proposed amendment filed with the 
request, and the time period for the applicant to take any further 
action that may be required as dictated by the facts. For example, if 
the response and any proposed amendment filed together with an untimely 
or otherwise non-compliant P3 request fails to place the application in 
condition for allowance, the next Office communication will be an 
advisory action. On the other hand, if the response and any proposed 
amendment is enterable under 37 CFR 1.116 and places the application in 
condition for allowance, the next Office communication will be a notice 
of allowability.
    If the review of a P3 request finds that the request is timely and 
complies with the requirements of the P3, but the technology center 
reviewing the request has reached its limit of 200 compliant requests 
accepted, a conference will not be held. In this situation, the 
response and any proposed amendment filed with the request will be 
treated under 37 CFR 1.116 in the same manner as any non-P3 response to 
a final rejection. The Office may need to take appropriate measures to 
adjust an examiner's workload if the volume of requests for a P3 
conference with any particular examiner becomes excessive.
    It is critical for P3 participants to understand that the filing of 
a P3 request will not toll the six-month statutory period for reply to 
the final rejection. To avoid abandonment, further action, such as the 
filing of a notice of appeal or RCE, will need to be taken within the 
six-month statutory period for responding to the final rejection, 
unless the applicant receives written notice from the Office that the 
application has been allowed or that prosecution is being reopened.

2. The Post-Prosecution Pilot Conference

    After the Office initially verifies that a P3 request is timely and 
compliant as discussed at Section II.B.1 of this notice, a Supervisory 
Patent Examiner (SPE) (preferably the SPE of the examiner of record) 
will coordinate a panel experienced in the relevant field of technology 
to review the response under 37 CFR 1.116 filed with the P3 request. 
The panel may include the examiner of record, the SPE, and a primary 
examiner (preferably the signing primary examiner for the examiner of 
record, if the examiner of record is a junior examiner). Every 
reasonable attempt will be made to select panel members with the most 
expertise in the relevant technological and legal issues raised by the 
application under consideration.
    Concurrently, the Office will contact the applicant to schedule the 
conference. The applicant may arrange to participate in-person, by 
telephone, or by a video conferencing tool, such as WebEx[supreg]. 
Although the Office will make every reasonable attempt to accommodate 
the applicant and timely schedule the conference, scheduling of the 
conference lies within the full discretion of the Office. If within ten 
calendar days from when the Office first contacts the applicant, the 
Office and the applicant are unable to agree on a time to hold the 
conference, or if the applicant declines to participate in the 
conference, the request will be deemed improper and treated in 
accordance with the discussion at Section II.B.1 of this notice. If the 
examiner of record is unable to participate on the scheduled date of 
the conference and rescheduling is not possible, the conference will 
proceed and the other conferees will gather input from the examiner 
prior to the conference if possible. The remaining conferees may, at 
their discretion, opt to include in the panel another examiner from the 
pertinent art.
    The conference will begin with the applicant's presentation, which 
is limited to 20 minutes. The applicant will be excused from the 
conference at the end of the presentation. Any materials used by the 
applicant during the presentation, e.g., a PowerPoint[supreg] or 
exhibit, will be placed in the file and will not count against the 
five-page limit on arguments. Entry of an affidavit or other evidence 
included as part of the presentation materials is governed by 37 CFR 
1.116. See MPEP 714.12.
    The applicant may present on appealable, not petitionable, matters 
(e.g., applicant may not present an argument that the final rejection 
was premature). The applicant may present arguments directed to the 
outstanding record, and, if the response filed with the P3 request 
includes a proposed amendment, the applicant also may present arguments 
directed to the patentability of the amended claim(s).
3. The Notice of Decision From Post-Prosecution Pilot Conference
    The applicant will be informed of the panel's decision in writing 
via the mailing of a Notice of Decision from Post-Prosecution Pilot 
Conference (form PTO-2324). For an accepted P3 request (refer to 
Section II.B.1 of this notice for the procedure that will be followed 
for an untimely or non-compliant P3 request), the notice of decision 
will indicate one of the following: (a) Final rejection upheld; (b) 
allowable application; or (c) reopen prosecution. In appropriate 
circumstances, a proposed amendment may accompany the notice of 
decision proposing changes that, if accepted, may result in an 
indication of allowability.
a. Final Rejection Upheld
    If the notice of decision indicates ``final rejection upheld,'' the 
notice of decision will not contain any additional grounds of rejection 
or any restatement of a previously made rejection. Instead, the notice 
of decision will summarize the status of the pending claims (allowed, 
objected to, rejected, or withdrawn from consideration) and the reasons 
for maintaining any rejection, and include an indication of any 
rejection that has been withdrawn as a result of the conference.
    For a P3 request that includes a proposed amendment as part of the 
response under 37 CFR 1.116, a notice of decision indicating ``final 
rejection upheld'' also will communicate the status of the proposed 
amendment for purposes of appeal (entered/not entered). If the proposed 
amendment is entered for purposes of appeal, and the notice of decision 
indicates which individual rejection(s) set forth in the final Office 
action would be used to reject the amended claim(s), then any 
subsequent examiner's answer may include the rejection(s) of the 
amended claim(s), and such rejection(s) made in the examiner's answer 
would not be considered a new ground of rejection.
    If a notice of decision indicates ``final rejection upheld,'' the 
time period for

[[Page 44849]]

taking further action in response to the final rejection expires on (1) 
the mailing date of the notice of decision; or (2) the date set forth 
in the final rejection, whichever is later. As discussed previously, to 
avoid abandonment, the applicant must file a notice of appeal or RCE 
within the statutory period for response to the final rejection. 
Extensions of time may be obtained under 37 CFR 1.136(a), but the 
period for response may not be extended beyond the six-month statutory 
period for response.
    A notice of decision indicating ``final rejection upheld'' is not 
petitionable. A decision to maintain a rejection is subject to appeal. 
Accordingly, the Office will not grant a petition seeking 
reconsideration of a panel decision upholding the final rejection. The 
applicant maintains the right of appeal under 35 U.S.C. 134 by filing a 
notice of appeal and an appeal brief and having the appeal considered 
by the PTAB.
b. Allowable Application
    If the notice of decision indicates ``allowable application,'' the 
notice of decision will be mailed concurrently with a Notice of 
Allowance, and the notice of decision will state that the rejection(s) 
is/are withdrawn
c. Reopen Prosecution
    If the notice of decision indicates ``reopen prosecution,'' the 
notice of decision will state that the rejection(s) is/are withdrawn 
and a new Office action will be mailed. The notice of decision also 
will state that no further action is required by the applicant until 
further notice.
4. Actions That Will Terminate a Post-Prosecution Pilot Conference
    If the applicant files any of the following after the date of 
filing a P3 request, but prior to a notice of decision from the panel 
of examiners, processing of the P3 request will end without a decision 
on the merits of the P3 request: a notice of appeal; a RCE; an express 
abandonment under 37 CFR 1.138; a request for the declaration of 
interference; or a petition requesting the institution of a derivation 
proceeding. The response and any proposed amendment filed with the 
request will be treated under 37 CFR 1.116 in the same manner as any 
non-P3 response to a final rejection. The next communication issued by 
the Office will indicate the reason that processing of the P3 request 
was terminated, the result of the treatment under 37 CFR 1.116 of the 
response and any proposed amendment filed with the request, and the 
time period for the applicant to take any further action that may be 
required as dictated by the facts.
    In addition, as stated earlier, once a P3 request has been accepted 
in response to a final rejection, no additional response under 37 CFR 
1.116 to the same final rejection will be entered, other than one that 
the examiner has requested because the examiner agrees it would place 
the application in condition for allowance. This condition of the P3 
holds true regardless of whether the additional response is filed prior 
to, on the same day as, or after a notice of decision from the panel of 
examiners.
    Finally, at any point during the processing of a P3 request, the 
examiner may enter an Examiner's Amendment placing the application in 
condition for allowance.

III. Request for Comments

    The Office has three main goals for the P3: (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 on the P3 and other 
suggestions to improve after final practice and reduce the number of 
both appeals and issues taken up for appeal to the PTAB and RCEs. The 
Office plans to evaluate the public feedback and the balance between 
the degree to which the P3 achieves its goals and the examining 
resources it expends. The Office will provide advance notification 
before modifying and/or extending the P3 or making the P3 permanent.

     Dated: July 7, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2016-16423 Filed 7-8-16; 8:45 am]
 BILLING CODE 3510-16-P