Anticipate This!™ | Patent and Trademark Law Blog

The Need for an “Enhanced” Enhanced First Action Interview.

Posted in Practice Commentary by Jake Ward on March 24, 2010

 

Back in April 2008, the USPTO initiated a First Action Interview Pilot Program, in which an applicant who complied with certain requirements received the results of a prior art search conducted by the examiner, via a condensed Pre-Interview Communication, and then was permitted to conduct an interview with the Examiner to discuss the cited prior art references prior to the first Office action on the merits. This approach differed from the norm, where an interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a continuing or substitute application or the Examiner determines that such an interview would advance prosecution of the application.

Although the original pilot program was only rolled out to a very limited number of art units, the concept was generally welcomed by practitioners. In view of the positive response, and comments from both Examiners and the practitioner base, the USPTO in October 2009 expanded an “Enhanced” First Action Interview Pilot Program to other art areas.  The Enhanced First Action Interview Pilot Program included modified procedures for purpose of enhancing efficiency and providing more options to participants. The Enhanced First Action Interview Pilot Program is available to applicants until April 2010.

We have now had some experience with the Enhanced First Action Interview Pilot Program. The pilot program certainly facilitates greater communication between practitioner and Examiner, which one would think would only lead to more efficient prosecution.  Although not resulting in an outright allowance of the application, the Pre-Interview Communication and subsequent First Action Interview did allow us to work through a number of issues that otherwise may have taken multiple Office Actions to resolve. However, all that being said, the procedures associated with the pilot program is not perfect and still has kinks to be worked out.

Most notably, the pilot program procedures do not seem to appreciate the collaboration that often occurs between an Examiner and a practitioner at the Interview .  Such collaboration very often results in amendments different from what was considered by either party prior to the interview.  The problem is that the present procedure only provides for three possible outcomes after the interview:

1) an agreement is reached and all claims are in condition for allowance;

2) an agreement as to allowability is not reached and the Examiner will formalize the requirements, objections, and rejections set forth in the Pre-Interview Communication in a First Action Interview Office Action; and

3) an agreement as to allowability is not reached and applicant is permitted to convert proposed amendments submitted in preparation for the Interview into a reply, and waive receipt of a First Action Interview Office Action. 

Thus, under the enhanced pilot program procedures, there is no way for the applicant to submit amendments different from the ones contemplated and proposed prior to the Interview.  Where amendments are developed during the course of the Interview, the pilot program instead requires the Examiner to issue the First Action Interview Office Action that sets forth the same objections and rejections already worked through at the Interview.  The applicant then must respond to the First Action Interview Office Action, as though the Interview  never took place, for the Examiner’s formal consideration and action.  Additionally, any next action may then  be made final by the Examiner, due to the fact that he was required to mail a faux First Action Interview Office Action only articulating objections and rejections that were already discussed with the practitioner.  

This procedural defect signficantly reduces the attractiveness of the First Action Interview concept for applicants, and only serves to introduce additional time and complexity into a process that was otherwise intended to streamline examination.  To fix this problem, we would propose as a future “enhancement” that applicant be permitted after the Interview to file a reply (effectively, a Preliminary Amendment) that would allow the applicant to amend the application as discussed during the Interview for the Examiner’s formal consideration and action.  Any subsequent action not resulting in an allowance would then be made nonfinal, and allow applicant more flexibility in addressing any new rejections made in the same.

On the whole, we still believe that the First Action Interview concept has merit, and could be a very useful tool for working with the Examiner early to identify patentable subject matter.  We are hopeful that the USPTO will continue to adjust the procedures to make the program more efficient and practical, and will eventually roll out the program with said adjustments as a standard procedure available for all applicants.

More information on the Original and Enhanced First Action Interview Pilot Programs may be found at the USPTO here

Any comments from our readership sharing experiences with the First Action Interview Pilot Program are welcomed.

5 Responses

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  1. Sam said, on March 25, 2010 at 8:50 am

    If you can convert the interview discussion into a preliminary amendment, the Examiner effectively has to examine three different sets of claims before the filing of an RCE (original, post-interview prelim amended, amended), when historically the Examiner has only had to examine two sets (original, amended). While this has obvious benefit to the practitioner, this is codifying an extra free action from the Examiner in the first round of prosecution and could result in a substantial increase in workload.

    I agree that you should be able to submit amendments contemplated in the interview before the Examiner has to write an action, but I think the examiner should be able to go final after such an amendment to limit the number of sets of examined claims per round of prosecution.

    Am I interpreting first action interviews as being more weighty than they are?

    “4) an agreement as to allowability is not reached and applicant is permitted to convert amendments discussed or contemplated in the Interview into a reply, and waive receipt of a First Action Interview Office Action. A subsequent action by the Examiner could be made final.”

  2. Jake Ward said, on March 25, 2010 at 11:58 am

    Thanks for the comments, Sam.

    You are certainly interpreting the Pre-Interview Communication to carry more weight than I have. The Pre-Interview Communication is effectively a 1-page document that lists potential objections and rejections in a tabular form. It identifies art that the Examiner deems to be relevant to patentability, as well as any objections for informalities, etc. The Pre-Interview Communication that I have seen only provided a brief, 1-2 line explanation relating to the potential objections and rejections. Certainly not office practice when it comes to preparing full Office Actions.

    I also believe that this is what the USPTO is intending the Pre-Interview Communication to be. Indeed, Mr. Kery Fries (Senior Legal Advisor at the USPTO, presenting at the 2010 IP Law Spring Seminar of the Michigan ICLE this past week) has described the Pre-Interview Communication as being akin to the International Search Report received after filing an International PCT application, with X, Y, and A references being identified. It is intended to be a very simple document, not requiring a substantial effort on the part of the Examiner. The intent of the document, to my understanding, is to serve as a platform for applicant to discuss the invention and the Examiner’s initial reasoning relative thereto, at the Interview.

    The ability of the Examiner to make the action final after the Pre-Interview Communication is also a real disincentive to using the procedure. You are correct that to do otherwise provides a benefit to the applicant – by why shouldn’t it?

    In order to take part in the procedure, the applicant must: a) limit the number of claims in the application to 3 independent and 20 total; b) agree to make an election without traverse if the Office determines that the claims are not obviously directed to a single invention; c) agree not to request for a refund of the search fee and any excess claims fee paid in the application after the mailing or notification of the pre-interview communication prepared by the Examiner; d) abide by the more stringent procedural timeline for response; and e) prepare and file proposed amendments and remarks in response to the Pre-Interview Communication.

    In view of all that applicant gives up in order to participate in the procedure, shouldn’t the applicant garner some benefit from participating in the procedure?

    Where it comes to the situation as I describe in the post (outcome #4 in your comment), the applicant is better off just waiting for a full-fledged first Office Action, and requesting an Interview after receipt thereof, per normal practice. To do otherwise unnecessarily limits the applicant’s options and adds to the cost of prosecution, without providing any real benefit over the normal practice to the applicant.

    Then again, with all that being said, maybe I’m the one giving the Pre-Interview Communication too little weight. I had viewed this procedure as being a way for an applicant to speak with an Examiner early, in order to clarify the invention and potentially resolve issues before the Examiner makes a first Office Action. If it is really the intent of the Office to eliminate a formal first Office Action in exchange for permitting the earlier Interview, then your proposed outcome #4 makes sense.

    Do any other readers have comments and/or personal experiences with the pilot program(s) that they are willing to share? Thoughts?

  3. 6 said, on March 29, 2010 at 2:06 pm

    “Certainly not office practice when it comes to preparing full Office Actions. ”

    No, but it probably should be.

    Obviously what you want is another action before Final. No problem. Get mgmt to up the counts given for one of these pre-first action interview things to 2.5 or 3 at final disposal and you’re golden. Otherwise, you’re just talking about more work for less counts. Good luck with that.

    “It is intended to be a very simple document, not requiring a substantial effort on the part of the Examiner.”

    This might come as somewhat of a surprise to you sir, but the search itself is quite a bother, not to mention having to put a case down and pick it up again later.

    “The ability of the Examiner to make the action final after the Pre-Interview Communication is also a real disincentive to using the procedure. ”

    You’re welcome to not use it. It isn’t for everyone.

    “You are correct that to do otherwise provides a benefit to the applicant – by why shouldn’t it? ”

    Because there is no such thing as a free lunch. Your “benefit” is simply “cost” to the examiner. Perhaps you should have spent a few years as an examiner so this would make sense to you.

    “a) limit the number of claims in the application to 3 independent and 20 total; b) agree to make an election without traverse if the Office determines that the claims are not obviously directed to a single invention; c) agree not to request for a refund of the search fee and any excess claims fee paid in the application after the mailing or notification of the pre-interview communication prepared by the Examiner; d) abide by the more stringent procedural timeline for response; and e) prepare and file proposed amendments and remarks in response to the Pre-Interview Communication.”

    OMG NO WAI!!!!!!!!!!!!!!!!!

    You also appear to be required to give up your formal first action in some circumstances. Big whoop.

    Everything is fine, the program is correctly implemented. Pay your grand for an RCE and stop whining.

    “To do otherwise unnecessarily limits the applicant’s options and adds to the cost of prosecution, without providing any real benefit over the normal practice to the applicant. ”

    To do so unnecessarily adds to the work done in prosecution without providing any real compensation to the person doing it.

    Everything is fine, the program is correctly implemented. Pay your grand for an RCE and stop whining. Nobody ever said that the pre-first action interview program was simply a “you get another, less formal, office action for free” program.

    That said, I’m all for this program. Seems like a good thing overall. Those who are skilled enough to use the program properly should benefit from it immensely. Those who are not will simply whine about it needing more, the same “more” they’ve wanted forever.

    6

  4. Jake Ward said, on March 29, 2010 at 3:32 pm

    Nice to see you on AT!, 6. We must be doing something right, to be receiving comments from such a renowned cynic on the PatentlyO thread.

    I’ll admit that the pilot currently doesn’t provide a true pre-first Office Action interview, as much as I believe applicants and the office would benefit from such as procedure. But really . . . “Everything is fine, the program is correctly implemented. Pay your grand for an RCE and stop whining”?

    Not even the Examiner I worked with during my experience with the pilot thought the procedural result was correct. The procedure, as it currently stands, required a formal Office Action to be prepared and mailed with rejections/objections that had already been resolved by the earlier interview. This was wasteful, busy work for the Examiner, whom I’m certain had other applications to be examining.

    More and more, I like Sam’s suggestion for the following further enhancement to the program:

    “4) an agreement as to allowability is not reached and applicant is permitted to convert amendments discussed or contemplated in the Interview into a reply, and waive receipt of a First Action Interview Office Action. A subsequent action by the Examiner could be made final.”

    Hopefully the USPTO will see fit to turn the pilot into a standard option, with at least this improvement.

    Any comments from readers who have actually had experience with the pilot?

  5. 6 said, on March 29, 2010 at 6:07 pm

    “Not even the Examiner I worked with during my experience with the pilot thought the procedural result was correct. The procedure, as it currently stands, required a formal Office Action to be prepared and mailed with rejections/objections that had already been resolved by the earlier interview. This was wasteful, busy work for the Examiner, whom I’m certain had other applications to be examining. ”

    The fact that one examiner doesn’t understand what is going on, or accounting, all that well doesn’t change the fact of the matter. I don’t particularly mind 4 either, but I’m not particularly sure how the rule requiring all official communication to be in writing would factor into this, it seems like it would prohibit it as things stand.

    I wouldn’t bet on your site getting that popular for any good reason, I just randomly clicked on a site from patent docs. But I’ll stop by if the mood strikes me.


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