USPTO Adds Another Final Office Action Option: P3 Pilot Program

USPTO Adds Another Final Office Action Option: P3 Pilot Program

The USPTO recently announced a 6 month pilot program to give applicants another option for responding to final office actions. Here is a discussion of current after final options.
The USPTO often releases its ideas for pilot programs, asking the public for comment, but in this case it announced that the program will open immediately and will close on January 12, 2017.How to Participate in the P3 ProgramThe applicant must file:

  1. A Certification and Request for Consideration under the Post-Prosecution Pilot Program (P3) Form within two months of the mailing date of the final rejection and before filing a notice of appeal.
  2. A response of no more than 5 pages of arguments with no claim amendments and/or optionally, a proposed non-broadening amendment to one or more claim(s).


  • Applicant cannot have previously filed a proper request to participate in the Pre-Appeal or the AFCP 2.0 programs in response to the same outstanding final rejection.
  • Once a P3 Request has been accepted, no additional response(s) under 37 CFR 1.116 will be entered, unless requested by the examiner.
  • It is also impermissible to request to participate in the Pre-Appeal program or request consideration under AFCP 2.0 once a P3 request has been accepted.

ProcessThe USPTO will contact the applicant to schedule a P3 conference, which is a conference of a panel of examiners (for example, three, although the number is not specified), one of whom is the examiner of record.  The initial contact from the USPTO will be to schedule a conference within ten calendar days of the initial contact.
The applicant will make an oral presentation to the panel of examiners, with such participation being limited to 20 minutes and following these rules:

  1. Any materials used by the applicant will be placed in the file.
  2. Applicant may present on appealable, but not petitionable, matters.
  3. Applicant may present arguments directed to the outstanding record or the patentability of the amended claim(s) as proposed.

After applicant’s presentation, the panel will inform the applicant of its decision, in writing.
The P3 process will be terminated if applicant files any of the following after the filing of the P3 Request but before a the panel decision:

  • A notice of appeal
  • A Request for Continued Examination (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

Following a panel decision rejecting the applicant’s argument, the applicant will have the option of filing an RCE, an appeal, or continuation applications.

If you have questions, contact me.
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