A Voice at the Table: The New Pre-Appeal Pilot

iStock_90868745_SMALLHave you ever tried a Pre-Appeal Brief Request for Review?  Ever wish you could sit in on the Examiner’s conference?  Well now you can, under a new pilot program launched today, July 11, 2016.  It’s called P3 (“Post-Prosecution Pilot Program”) and combines some aspects of after-final practice with an expanded role for the applicant in a pre-appeal review.

Program details are laid out in a Federal Register notice (81 FR 44845, Jul. 11, 2016, pdf copy) and at the pilot program microsite, but here is a quick summary:

  1. A P3 request must be filed within 2 months of a final rejection and before the filing of a notice of appeal.
  2. The request must include an after-final response no longer than 5 pages and compliant with Rule 37 C.F.R. § 1.116. New evidence counts toward the page limit, but a proposed amendment does not.  Both amendments and new evidence must be justified with a showing of why late entry is warranted.
  3. The P3 conference panel typically will include the examiner of record, the examiner’s supervisor, and another examiner experienced in the relevant technology.
  4. The applicant has 20 minutes to present the case to the examiner panel and may use exhibits, which will not count against the page limit.
  5. The panel can decide to uphold the rejection, allow the case, or reopen prosecution to enter a new rejection. The panel also can propose its own amendment that, if adopted, would place the application in condition for allowance.

The pilot program is scheduled to run through January 12, 2017 or as soon as the USPTO receives 1,600 valid P3 requests.  The requests are also limited to no more than 200 per technology center, so some applications may lose eligibility before others.  As it has with many other pilot programs, however, the USPTO may elect to extend this one.

UPDATE 7/13/2016:  The USPTO is maintaining counters for the numbers of pilot cases in each technology center, as well as general information about the pilot, at a special pilot microsite.


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