By James E. Lowe, Jr.
On January 12, 2017, the United States Patent and Trademark Office (USPTO) let expire one of its pilot program initiatives meant to improve the patent application process at the USPTO. Under the Post-Prosecution Pilot Program (P3), after an application had been refused, the applicant was given an opportunity to make their case, not only before the same patent examiner who already refused the application, but before a panel of three examiners. The applicant was allowed 20 minutes to present an argument before the panel. The panel then provided a Notice of Decision with a brief written summary of its ruling.
Programs such as this are meant to rectify situations where an applicant faced an unreasonable examiner, a situation that happens all too often, especially as of late. The only other traditional opportunity to deal with an unreasonable examiner has been to file an appeal to the Patent Trial and Appeal Board, but such appeals often take years to resolve. Unlike an appeal to the Patent Trial and Appeal Board, the P3 Decision would come in less than a couple of months.
The loss of P3 thus reduces an applicant’s ability to promptly deal with an unreasonable examiner. Fortunately, there is an alternative. The USPTO still offers what is called its Pre-Appeal Brief Conference Pilot Program. Under this program, there is no opportunity to present oral argument, but the applicant can submit a Pre-Appeal Brief with its Notice of Appeal, with no more than five pages of argument. As with the P3, a panel of three examiners reviews the submission. The panel then renders its decision within a couple of months, only indicating that either the examination has been reopened or the final refusal stands, without explanation.
Although the loss of P3 reduces an applicant’s options for dealing with an unreasonable examiner, the Pre-Appeal Brief Conference Pilot Program still offers a remedy.
If you have any questions about this article, please contact your Davis & Kuelthau attorney, or the author, James Lowe at 414.225.1453 / jlowe@dkattorneys.com.