The U.S. Patent and Trademark Office (USPTO)’s Post-Prosecution Pilot (P3) Program, launched on July 11, 2016, was terminated on January 12, 2017, just 6 months after it began. In general, the P3 Program combined the benefits of a Pre-Appeal Brief Request for Review and the After Final Consideration Pilot 2.0 program (AFCP 2.0), and included additional benefits for the applicant. For instance, filing under this program provided for an after final response to be considered by a panel of examiners, an after final response to include claim amendments, and an opportunity for applicants to make a presentation to the panel of examiners to discuss why their claimed invention is patentable. In addition, there was no government fee for filing a response under the P3 Program.
The P3 Program was ultimately designed “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[.]” Federal Register, Vol. 81, No. 132, (July 11, 2016). According to the USPTO, the P3 Program was 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 Examiner (RCE), and simplify the after final landscape.” (Id.)
After only six months, did the USPTO achieve its goals for the P3 Program? This may be a difficult question to answer because the USPTO does not appear to have published statistical results specifically related to the P3 Program. What we do know, however, is that within the brief six month period that the P3 Program was implemented, the USPTO accepted a total of 1,541 requests for entrance into the P3 Program. Nearly all of the Technology Centers (TCs) that participated in the P3 Program reached maximum capacity in the number of requests accepted, except for one TC, which accepted 141 requests out of an allotted 200. Based on these numbers alone, one could argue that there was clearly a demand for the program. It also appears that applicants attempted to take full advantage of the additional opportunity to expedite prosecution provided by the P3 program, and possibly save on the costs associated with entering the appeal process or having to file an RCE.
Although the numbers appear to show the desire of applicants to utilize an extra tool to help expedite prosecution of their patent applications, the likelihood that the USPTO will reactivate the P3 Program is unclear. However, in view of the USPTO’s continued extension of the AFCP 2.0 (which began nearly 5 years ago) and the Pre-Appeal Brief Conference Pilot Program (which began nearly 10 years ago), there remains a possibility that the USPTO may reactivate the P3 Program after some reevaluation. In particular, the USPTO stated in its announcement of January 12, 2017, to terminate the program that “[t]he Office plans to evaluate public feedback and pilot participation results to determine our next steps[.]”
So, should the USPTO reactivate the P3 Program? If the USPTO’s RCE backlog numbers are any indication, reactivating the P3 Program might not be a bad idea for that reason alone. The USPTO saw a slight decrease in its RCE backlog during the short period of the P3 Program between July 2016 (at 36,105), which was when the P3 Program was implemented, and December 2016 (at 32,829). Thus, not only was there a demand for the P3 Program, seeing a decrease in the USPTO’s RCE backlog of 3,276 RCEs may provide some additional incentive for the program’s reactivation.
Nevertheless, considering that the USPTO did not extend the program immediately before or after its end date, there appears to be no immediate prospect that the USPTO will reactivate the program, despite its documented popularity and the improvement in RCE backlog during the time it was in place.