December 10, 2009

U.S. Patent and Trademark Office Expands First Action Interview Pilot Program

3 min

In April 2008 the U.S. Patent and Trademark Office (USPTO) introduced the First Action Interview Pilot Program (“Pilot Program”), and on October 1, 2009, the USPTO enacted an enhanced version of the Pilot Program. The enhanced version, among other things, increases the number of applications eligible for the program.

The Pilot Program provides applicants who submit eligible U.S. patent applications with the opportunity to conduct an interview with the patent examiner after he or she conducts a prior art search, but before issuance of a first Office Action on the merits.

Participation Requirements

In order to participate in the Pilot Program, an application must be assigned to an eligible art unit at the USPTO and must meet the filing date requirement applicable to that art unit. A list of eligible art units and the corresponding filing date requirements are set forth on the USPTO’s web site at http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/faipp_enhanced.htm.

In addition to the art unit and filing date requirements set forth above, an application must be a non-reissue, non-provisional utility application having no more than three independent claims, and no more than twenty claims in total. The application must not contain any multiple dependent claims and can only claim a single invention. A new provision under the enhanced program requires that any response to a restriction or election requirement be made without traverse.

Procedures

In order to participate in the Pilot Program, the Applicant must request participation prior to issuance of a first Office Action on the merits. Before the interview, the patent examiner will conduct a prior art search, and determine whether the application is allowable. If not, the patent examiner will issue a Pre-Interview Communication setting forth a one-month time period (extendible for thirty days under the enhanced program) during which the applicant may request or decline the interview. If the applicant requests the interview, proposed amendments to the application and/or proposed arguments should be submitted concurrently with the request. If the applicant chooses to waive the interview, he or she can file a substantive reply to the Pre-Interview Communication under 37 C.F.R. § 1.111, with or without amendments.

During the interview, the following topics may be covered, among others:

  • Assisting the patent examiner in understanding the claimed invention

     

  • Establishing the relevant state of the art

     

  • Discussing relevant prior art teachings

     

  • Identifying claim features that are distinguished from the prior art

     

  • Discussing proposed amendments and/or remarks

If the patent examiner and the applicant agree during the interview that the application is allowable, the patent examiner can issue a Notice of Allowance allowing the application. If no agreement is reached, the patent examiner will issue a First Action Interview Office Action, to which the applicant must respond like a typical Office Action. Under the enhanced program, the applicant can request waiver of the First Action Interview Office Action during the interview. In this case, the applicant can instead submit amendments and/or arguments in response to the Pre-Interview Communication.

Conclusion

The Pilot Program gives applicants who submit certain patent applications the opportunity to conduct an interview with the patent examiner prior to issuance of a first Office Action on the merits. The interview can be used to discuss various arguments and/or amendments with the examiner, without committing them to paper. As a result, the applicant may be able to avoid creating unnecessary prosecution history estoppels. In addition, by resolving issues early, the applicant may be able to minimize the number of formal replies submitted to the USPTO, thereby reducing the costs and examination delays associated therewith. Therefore, Applicants who submit applications that meet the eligibility requirements for the Pilot Program should strongly consider taking advantage of this opportunity for an interview.

Steven J. Schwarz is an associate in Venable's Patent Prosecution Group. He can be reached at 202.344.4295 or [email protected].