This document provides information about various options for responding to a final rejection from the USPTO, including the After Final Consideration Pilot Program (AFCP), Pre-Appeal Brief Review, and the new Post-Prosecution Pilot (P3). The AFCP allows filing a response with a non-broadening amendment without an RCE fee. Pre-Appeal Brief Review involves filing a notice of appeal and brief for panel review. P3 allows filing arguments and an optional amendment for panel consideration without an RCE. The document compares the options and provides guidance on which to select based on the examiner's position and whether an appeal is ready to be filed.

2. Calendar
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– Patents and Trademarks in Europe post BREXIT:
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 August 23, 2016, 10:30-11:30 AM

3. Automated Interview Request (AIR)

4. USPTO Internet
• Authorization for
Internet
Communication
(PTO/SB/439)
– Allows
Transmission
proposed claim
amendments for
interview via email.
– Consider filing with
application when
originally filed.

5. Changes to Accelerated Examination
Changes Generally Made to Harmonize with AIA
• Pre-Exam Search
– Need to list CPC instead of USPC
• Accelerated Examination Support Document
(AESD)
– Need to now identify prior art disqualified AIA
102(b)(2)(C) (common ownership)
• Reply by Applicant
– Shortened time to reply extended from 30 days
to 2 months
• Complete Application Upon Filing
– Now precludes any petition under 37 CFR
1.46(b)(2) to designate a person with sufficient
proprietary interest as the applicant.

6. Accelerated Examination
• Goal: 12 months to disposition
• Available for
– Utility applications
– Design applications (MPEP 708.02(a)(VIII)(A)
• Not available for
– Plant applications
– Reissue applications
– §371 national stage applications
– Reexamination proceedings
– RCEs (unless previously granted special status); and
– Petitions to make special based on applicant’s health or
age or under the PPH pilot program

7. Accelerated Examination
• Filing Application for Accelerated Examination
– Application must be "complete" and "in condition for examination"
 e.g., all required fees, oath/declaration of actual inventor, spec,
claims, drawing, title, abstract, priority claims
– File electronically
– Include suggested classification (CPC)
– No preliminary amendments
• File Petition
• Pay Fee (if invention not exempted)

8. Accelerated Examination
• Claims
– 3 or Less Independent
– 20 or Less Total
• Claims Directed to Single
Invention
• Cannot Argue Patentability
of Dependent Claims
Separate from Independent
Claims During Appeal!
• Interviews
– Agree to interview even
before 1st Office Action
– Restriction- oral election

9. Accelerated Examination
Search Statement and
Examination Support Document
(ESD)
• Need to conduct a search before
filing and describe search
methods
• File IDS of references found
• Each Reference- identify all limitations
from claims disclosed in the reference
• Detailed Explanation on Patentability
• Support Showing for Each Limitation
• Utility- Concise Explanation
• Identify Disqualified Prior Art Under
Pre-AIA 35 USC 103(c) or
AIA 35 USC102(b)(2)(C)

10. Accelerated Examination
Fee
• $130
• No Fee for Inventions
Directed to:
– Environment
– Energy
– Anti-terrorism
– Superconductivity
• Petition Dismissed
– Omitted Items

11. Accelerated Examination- Prosecution
• General
– Goal:12 months to allowance, final OA, RCE, or abandonment
– Failure to meet goal is not petitionable nor appealable
– Examiner begins examination within two weeks
• Restriction Requirements
– Examiner will telephone applicant with restriction requirement
– Applicant must elect w/o traverse by telephone
– Special status for continuing apps must be petitioned
individually

12. Accelerated Examination- Prosecution
• Interviews
– Examiner telephones applicant to discuss any rejections
– If interview does not result in allowance, OA is mailed
• Substantive Office Actions
– Two months to reply to non-final OA, or abandonment
– No extensions of time permitted
– USPTO has conference prior to mailing any OA (same as for pre-appeal
brief review)
• Appeal
– Appeal not accelerated but post-appeal prosecution is accelerated
– RCE will delay disposition, but the prosecution remains accelerated

13. Options for Responding to Final Office
Actions
Standard
• Abandon
• Continuation or Divisional Application
• Full Appeal
• Request for Continued Examination (RCE)
Relatively New
• Request for Pre-Appeal Brief Review
• After Final Consideration Pilot Program 2.0
• Post Prosecution Pilot (P3)

14. Pre-Appeal Review
Paperwork
• Notice of Appeal +
Fee ($800)
• Pre-Appeal Brief
Request Review
Form
• Remarks- 5 pages

15. Pre-Appeal Review
Grounds
• Clear errors in the
examiner's
rejections; or
• Examiner's
omissions of one
or more essential
elements needed
for a prima facie
rejection.

16. Pre-Appeal Brief Review
Pre-Appeal Conference Panel (at least include)
• Supervisor (SPE)
• Examiner of Record
• Assembled by administrative assistant in
Technology Center
• No interview before panel’s decision

17. Pre-Appeal Brief Review
Outcome (Findings)
1. The application remains under appeal
because there is at least one actual issue for
appeal.
2. Prosecution on the merits is reopened and an
appropriate Office communication will follow
in due course.
3. The application is allowed on the existing
claims and prosecution remains closed.
4. The request fails to comply with the
submission requirements and is dismissed.

18. After Final Consideration Program Pilot 2.0
• Avoids the Expense of RCE’s
– See, http://www.uspto.gov/patent/initiatives/after-
final-consideration-pilot-20
• Timing
– Responses to Final Office Actions Filed From
May 19, 2013 to September 30, 2016
• Requirements (NO FEE)
– Request for Consideration Under Pilot
(PTO/SB/434)
– Amendment to at least one independent claim
that does not broaden it
– Willing to participate in an interview

19. After Final Consideration Program Pilot 2.0

20. After Final Consideration Program Pilot 2.0
• What does the Examiner Get?
– Up to 3 Hours non-production time
– 10 day adjustment of docket management clock
• Outcome
– Examiner can deny request (file RCE)
– Allow the application
– Request interview
• Need to conduct interview within 10 days
– Otherwise back to filing RCE

21. New Post-Prosecution Pilot (P3)
• Combines features
– Pre-Appeal Brief Review Conference Pilot (Pre-
Appeal)
– After Final Consideration Pilot Program (AFCP)
• Post-Prosecution Pilot (P3)
– Submit Proposed After Final Amendment for
Consideration by a Panel of Examiners
– Opportunity to Present to Panel (in person/phone)
– Panel Provide Brief Written Summary
 Claim status
 Reasoning for maintaining rejection
See, http://www.uspto.gov/patent/initiatives/post-prosecution-pilot

22. New Post-Prosecution Pilot (P3)

23. New Post-Prosecution Pilot (P3)
• P3 Forms Needed
– A Request Form filed via
EFS-Web (PTO/SB/444)
– A response with five (5)
pages of arguments max
– Optional- a proposed non-
broadening amendment to
one or more claim(s).
• NO FEE REQUIRED.
• Timing- Before 2 Months

24. Requirements
• A Request Form
filed via EFS-Web
– Within two (2)
months of final OA
– Prior to filing a
notice of appeal.
• A statement (in
Request Form)-
Applicant is willing
and available to
participate in a P3
conference
New Post-Prosecution Pilot (P3)

25. • P3 Requirements
– For the same final OA,
cannot have filed
 Pre-Appeal Request
 AFCP Request
– Once a P3 Request has been accepted, no
additional response(s) under 37 CFR 1.116 will be
entered, unless requested by the examiner.
– Impermissible to request to participate in the Pre-
Appeal program or request consideration under
AFCP once a P3 request accepted.
New Post-Prosecution Pilot (P3)

26. New Post-Prosecution Pilot (P3)
• Non-Compliant/Untimely P3 Request
– Request treated in the same manner it would treat
any after final response absent the P3 Request.
 No conference will be held.
– The next communication issued by the Office will
indicate:
 the reason why the P3 request was found to be
untimely or otherwise non-compliant;
 the result of the treatment under 37 CFR 1.116 of the
response and any proposed amendment; and
 the time period for the applicant to take further action.

27. New Post-Prosecution Pilot (P3)

28. New Post-Prosecution Pilot
• Process for Compliant P3 Request
1. Examiner Calls- schedule interview within 10
Days
2. Interview/conference- 20 minute presentation
 Petitionable arguments not considered
 No Asking Examiner(s) Questions (but they can)
3. Decision informed in writing.
• Examiner Conference Panel
1. Examiner of Record
 If examiner is a junior examiner, the signing primary
examiner may optionally attend.
2. Supervisor (SPE)
3. Other Primary Examiner.

29. New Post-Prosecution Pilot (P3)
• Notice of Decision
– Final Rejection Upheld
 Status of claim amendments
 Time period to respond
– Allowable Application
– Reopen Prosecution

30. New Post-Prosecution Pilot (P3)
• Timing- Final Rejection Upheld
– Must File RCE or Notice of Appeal (or CON)
 AFCP and Pre-Appeal Request not allowed.
– Later of:
 Mailing Date of Decision
 Final Office Action
– Extensions of Time Allowed
 Can’t exceed 6-month statutory bar deadline

31. Comparison of After Final Options
Fees Who is
Reviewing?
Interview? Can You
Amend?
AFCP None Examiner in
Charge of Case
Yes, must be
willing to
participate
Yes, must have
at least 1 non-
broadening
amendment to
independent
claim
Pre-Appeal
Brief
Review
$800
(large)
Notice of
Appeal Fee
Panel (3, typically)
-SPE
-Examiner
-Another Primary
No No
P3 None Panel (3)
-SPE
-Examiner
-Another Primary
Yes, but one
way
conversation
with Panel
asking
questions
Yes, optional
non-broadening
amendment(s)

32. Comparison of After Final Options
Remarks
Length
Timing of Filing Impact on
Statutory
Deadline
Decision Maker
AFCP As long as
you want
(regular
response)
Before 6-month
statutory
deadline
Still must do
something
before 6-
month
deadline
Examiner in
Charge of Case
Pre-Appeal
Brief
Review
5 Pages, but
can refer to
prior
arguments
Before 6-month
statutory
deadline
Now subject
to appeals
deadline
3 Members of
Panel
P3 5 Pages, but
can refer to
prior
arguments
Must be filed
within 2 months
of transmission
date of Final
Office Action
Still must do
something
before 6-
month
deadline
3 Members of
Panel, but might
have issue if the
examiner in
charge is a
junior examiner

33. What to Do When You Have a Final Office
Action Do Not Want to File an RCE
Examiner Close to
Allowing Case?
File AFCP Request to sweeten
deal without RCE
Examiner Not Willing to
Allow Case?
Not Ready to Appeal (no prior RCE)
• File P3 Request
Ready to Appeal (prior RCE)
• File Pre-Appeal Brief Review Request
One Strategy to Avoid/Reduce RCE Usage