The USPTO expanded its Full First Action Interview Pilot Program from limited art areas to include all areas of technology. In this program, patent applicants may request (and must be granted) an interview with the patent examiner assigned to the case prior tothe first Office action on the merits. Any request on or after April 1, 2011 will be granted if the application meets certain requirements. This pilot program will last until May 16, 2012.
To be eligible, the pending application must not have more than 3 independent and 20 total claims all directed to a single invention (i.e., not subject to a restriction requirement). An application subject to a restriction requirement will still qualify for the program once the applicant elects one group of claims without traversing.
“The application must be a non-reissue, non-provisional utility application filed under 35 U.S.C. 111 (a), or an international application that has entered the national stage in compliance with 35 U.S.C. 371(c).”
To participate, an applicant must electronically file a request for a first action interview at least one day before an Office Action is entered into the Patent Application Information Retrieval system (PAIR). If an application does not originally qualify for this program based on not satisfying the requirements, a Preliminary Amendment can be used to allow the application to become eligible under this program.
Prior to the interview, the examiner is required to prepare a “pre-interview communication” that indicates references to be cited and outlines any potential rejections/objections.
In the prior pilot program, the USPTO found that about 33% of applications were allowed in the first office action on the merits. Outside the program, only 11% of applications received a first-action allowance.
No additional fees are required to participate in the program. However, applicants must waive their right to request a pre-examination refund of fees.
“A complete written statement as to the substance of the interview with regard to the merits of the application must be made of record in the application, whether or not an agreement with the examiner was reached at the interview. It is the responsibility of applicant to make the substance of an interview of record and it is the examiner’s responsibility to see that such a record is made and to correct inaccuracies, including those which bear directly on the question of patentability.”
For more information, please see:
http://www.uspto.gov/patents/init_events/faipp_full_preog.pdf
http://www.uspto.gov/news/pr/2011/11_33.jsp
Article by Brian Berman
