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