Anticipate This!™ | Patent and Trademark Law Blog

Pre-Office Action Interview Pilot Program.

Posted in Practice Commentary by Jake Ward on April 15, 2008

Per this USPTO press release yesterday:

The Commerce Department’s United States Patent and Trademark Office (USPTO) today announced that it is initiating a six-month pilot program that will allow an applicant to have an interview with the patent examiner prior to the first Office action on the merits in a new utility application. The First Action Interview Pilot program will expedite prosecution of the patent application by enhancing the interaction between the applicant and the examiner, providing the applicant an opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the review process. The program will begin on April 28.

“As we have learned from our Accelerated Examination program, an interview between the applicant and examiner early in the review process can help resolve issues more quickly and expedite a final decision,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas. “We believe the enhanced information exchange in the First Action Interview Pilot program will offer dual benefits of reduced pendency and improved patent quality.”

Currently, an applicant may request an interview prior to a first action. Granting of an interview is within the discretion of the examiner who has not yet reviewed the case, and the applicant may be required to identify relevant documents and explain how the invention is patentable over these documents.

Under the pilot program, the examiner will conduct a prior art search and provide the applicant a pre-interview communication which is a condensed preview of objections or rejections proposed against the claims. Within 30 days from the issue date of the pre-interview communication, the applicant must either choose not to have a first action interview with the examiner, or schedule the interview and file a proposed amendment and/or remarks.

Should the applicant choose not to have a first action interview, a First Action Interview Office action will be promptly issued and the applicant will have one month or 30 days, whichever is longer, to reply. If an interview is scheduled, the applicant must be prepared to discuss issues related to the patentability of the claims. In this interview, if the applicant and the examiner reach agreement on all claims in regards to patentability, a notice of allowance will be issued. If agreement is not reached on all claims in regards to patentability, the applicant will be given a courtesy copy of a First Action Interview Office action setting forth any requirements, objections and rejections to which the applicant will be given one month or 30 days, whichever is longer, from the issue date of the First Action Interview Office action to reply, with limited extensions of time. It is this First Action Interview Office action that is considered the first action on the merits in the application.

This pilot is currently limited to two technology areas to facilitate the USPTO’s ability to gauge the success of the pilot: applications classified in Class 709 (electrical computers and digital processing systems: multi-computer data transferring) and applications in Class 707 (data processing: database and file management or data structures).

For details regarding eligibility and criteria for participation in the pilot, see the USPTO Web site, at www.uspto.gov/web/offices/pac/dapp/opla/preognotice/faipp_v2.htm.

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