Post-Prosecution Pilot Program (Patents)

[Federal Register Volume 81, Number 132 (Monday, July 11, 2016)]

[Notices][Pages 44845-44849] Post-Prosecution Pilot Program

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice; request for comment.

SUMMARY: The United States Patent and Trademark Office (Office) is initiating a Post-Prosecution Pilot Program (P3) to test its impact on enhancing patent practice during the period subsequent to a final rejection and prior to the filing of a notice of appeal. This Pilot Program responds to stakeholder input gathered during public forums held in support of the Enhanced Patent Quality Initiative. Under the P3, a panel of examiners, including the examiner of record, will hold a conference with the applicant to review the applicant's response to the final rejection of record. In order to participate in the P3, the applicant will be required to file a request for consideration under the P3 within two months from the mailing date of a final rejection and prior to filing a notice of appeal, together with a response to the final rejection and a statement that the applicant is willing andavailable to participate in the conference. The applicant will have the option of including in the response a proposed non-broadening amendment to a claim(s). The Office designed the P3 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. The P3
is 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 Examination (RCE), and simplifythe after final landscape. This notice identifies requirements and procedures of the P3, which will govern entry into, and practice under, the P3. This notice also solicits public comments on the P3 and other suggestions to improve after final practice and reduce the number of both appeals to the PTAB and RCEs.

DATES: Effective Date: July 11, 2016.

Duration: The P3 will accept requests beginning July 11, 2016,until either January 12, 2017, or the date the Office accepts a total (collectively across all technology centers) of 1,600 compliant requests to participate under the P3, whichever occurs first. Each individual

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technology center will accept no more than 200 compliant requests,meaning that the P3 may close with respect to an individual technology center that has accepted 200 compliant requests, even as it continues to run in other technology centers that have yet to accept 200 compliant requests.

Comment Deadline Date: Written comments must be received on or before November 14, 2016.

For more information https://www.gpo.gov/fdsys/pkg/FR-2016-07-11/html/2016-16423.htm

New PAIR Enhancements

Global Dossier access for Public and Private PAIR

Beginning June 26, users can access Global Dossier through Public and Private PAIR via a Global Dossier hyperlink--only available when a user is viewing a publicly available utility application filed under 35 U.S.C. 111(a) and publicly available national stage applications submitted under 35 U.S.C. 371.

For additional information, please visit the Global Dossier Initiative page.

New Download Features in Private PAIR

As of June 26, there are new download features within Private PAIR under the IFW tab, the View Outgoing Correspondence Search, and View e-Office Action Notifications. 

These new download features are part of the eMod Project. The first new download features are two buttons labeled XML and DOCX.  At this time, the XML and DOCX buttons are inactive until these files types become available to eMod Text Pilot Program participants. The additional new download feature is a PDF hyperlink, which is available to all Private PAIR users.

For additional information about the eMod Project and how to join the eMod Text Pilot Program, please visit the eMod page.

PTAB Replaces Patent Review Processing System

The USPTO deployed an e-filing system known as the Patent Review Processing System (PRPS) for trials under the America Invents Act (AIA) on September 16, 2012.  Since then, usage of PRPS has exceeded our expectations, and the time has come to transition to a new system to better serve the needs of the public. 

That new system is called Patent Trial and Appeal Board End to End (PTAB E2E).  PTAB E2E uses a web browser (Chrome is the preferred browser) and a step by step filing program to enable petitioners and patent owners to provide metadata and upload pdf documents to the system.  PTAB E2E also provides an interface to the USPTO Next Generation financial system (FPNG) for paying fees.

The target date to deploy PTAB E2E is July 9, 2016. Upon initial deployment, PTAB E2E will be used for Inter Partes Review (IPR), Covered Business Method Review (CBM), and Post Grant Review (PGR). Derivations (DER) will still be processed in PRPS until they are migrated into PTAB E2E later in 2016. During this initial deployment both PRPS and PTAB E2E will be unavailable beginning Saturday, July 9, 2016 at 12:01 AM until 5:00 AM, Monday, July 11, 2016.

The new features of PTAB E2E include:

For all external users, with or without a login email address:
• full text document search
• metadata search
• additional search filters
For external users with a login email address:
• a dashboard that includes the most recent document upload activity and status of filed cases
• an improved docket
• easier navigation of AIA review papers and exhibits
• filter search on the docket

The PTAB E2E system link, a user manual, FAQ, and quick reference guides will be available on July 11, 2016 at http://www.uspto.gov/ptab in the upper right portion of the web page.

In the near future, an Application Programming Interface (API) will make PTAB trial data available for bulk data downloads.

As the system is deployed, we encourage you to provide feedback about the PTAB E2E system by sending your comments to PTABE2EADMIN@uspto.gov. 

Customer support will be available Monday-Friday from 8:00 AM until 6:00 PM EST at 571-272-7822. Additional transition coverage will be available during the week of July 11th until 12:30 AM EST.

Read more from the Director's Forum Blog