Originally published September 15, 2011
The United States Patent and Trademark Office (USPTO)
recently announced that it is expanding the First Action Interview
Pilot Program to include all utility applications in all technology
areas. As under the previous program, which was limited by
technology area and filing date, an applicant is entitled to a
first action interview, upon request, prior to the first Office
Action on the merits. The new pilot program is scheduled to run
through May 16, 2012.
To take advantage of this program, applicants must
electronically file a request for first action interview at least
one day before a first Office Action appears in the Patent
Application Information Retrieval (PAIR) system. Then, once the
application is taken up for examination, the examiner will issue a
Pre-Interview Communication containing the results of a prior art
search. In response to this communication, the applicant must
either file a request not to have a first action interview or
schedule the interview and file a proposed amendment or remarks. If
the applicant chooses not to have a first action interview, a First
Action Interview Office Action will promptly issue with a shortened
period for response of one month or thirty days. If the applicant
chooses an interview, and the applicant and examiner reach
agreement during the interview on the patentability of all claims,
a Notice of Allowability will be issued promptly after the
interview. If agreement is not reached, a First Action Interview
Office Action will be issued with a shortened period for response
of one month or thirty days, with limited extensions of time.
Some eligibility requirements exist for participation in the
First Action Interview Pilot Program:
- 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).
- The application must contain three or fewer independent claims
and twenty or fewer total claims. The application must not contain
any multiple dependent claims. Applicants may file a preliminary
amendment to cancel claims in excess of 20 and/or multiple
dependent claims to make the application eligible for the pilot
program.
- The claims must be directed to a single invention. If the
Office determines that the claims are directed to multiple
inventions, e.g., in a restriction requirement, the applicant must
make an election without traverse or withdraw the application from
the pilot program.
- The request for a first action interview must be filed
electronically.
- The request for a first action interview must be filed at least
one day before a first Office Action on the merits appears in the
PAIR system for the application.
- The request for a first action interview must include a statement that applicant agrees not to file a request for a refund of the search fee and any excess claim fees paid in the application after the mailing or notification date of the Pre-Interview Communication.
Although the First Action Interview Pilot Program may not accelerate the time before an application is searched and considered by an examiner, the program may help accelerate prosecution once an Examiner is ready to consider the application. Given the expansion of the First Action Interview Pilot Program to include all utility applications in all technology areas, applicants may want to consider reviewing their portfolio of pending U.S. applications awaiting a first Office Action on the merits to determine if a request for a first action interview should be filed before such an opportunity is lost by issuance of an Office Action.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.