The United States Patent and Trademark Office (“the Office”)
has a new procedure for applicants who receive a final rejection. The procedure
is called Post-Prosecution Pilot ("the program").
Applicants who
receive final rejections to nonprovisional utility applications filed may file
the Request to participate in the program. Design, plant, reissue, and
reexamination proceedings are prohibited from participating in the program.
To begin, the
applicant completes (1) a Request Form ("Certification and Request for
Consideration under the Post-Prosecution Pilot Program") filed
electronically within two months of the mailing date of the final rejection;
and (2) a statement that the applicant is willing to participate in a
conference; (3) a response with a maximum of five pages of arguments, exclusive
of any amendments; and (5) optionally, a proposed non-broadening amendment to
one or more claim(s).
The requirements to participate are:
1. fortunately,
there is no fee to participate in the program;
2. only one request
per application is allowed; and
3. the examiner may
request an additional response(s).
An applicant is not
allowed to file any of the following:
1. a notice of
appeal;
2. request for
Continued Examination (RCE);
3. an express
abandonment;
4. a request for
the declaration of interference or;
5. a petition
requesting the institution of a derivation proceeding.
The Office will contact
the applicant to schedule the conference. There will usually be a conference
within ten calendar days. The applicant will make an oral presentation to the
panel of examiners no longer than 20 minutes and the conference will have the
following rules:
a) claim
amendments, affidavits or other evidence included as part of the presentation
materials;
b) applicant can
only present appealable, not petitionable, matters;
c) applicant may
present arguments directed to the patentability of the amended claim(s) as
proposed.
Then the panel will
discuss the proposed findings and prepare a written decision.
The applicant will
be informed of the panel’s decision. The decision will be one of the following:
1. Continue
prosecution; a notice of decision indicating reopen prosecution will state that
the rejection(s) is/are withdrawn and a new Office action will be mailed.
2. Confirm the
final rejection:
a) If proposed
amendment(s) were included with the Request, then the status of such
amendment(s);
b) the time
period for 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. 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.
c) the Office
will not grant a petition seeking reconsideration of a panel decision upholding
a final rejection.
3. Notice of
Allowance.
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