May 18, 2011
On May 16, 2011, the U.S. Patent and Trademark Office (USPTO) announced an expansion of the Enhanced First Action Interview Pilot Program, which ended April 1, 2011, to all utility, non-reissue patent applications in all technology areas. Starting immediately, applicants can request an interview with the examiner prior to issuance of a first office action.
An interested applicant must electronically file a Request for First Action Interview form at least one day before a first office action on the merits of the application appears in the Patent Application Information Retrieval (PAIR) system. To be eligible for this program, the application may not include multiple dependent claims, may include no more than three independent claims, and may include 20 or fewer total claims. To meet these requirements, an applicant may file a preliminary amendment. After receiving the request, the examiner will prepare a Pre-Interview Communication that will include the results of an art search and proposed claim rejections and objections.
Within 30 days of receiving this communication, the applicant schedules an interview and submits to the examiner proposed arguments and/or amendments for discussion at the interview. Should the examiner and applicant not reach a final agreement on claims during the interview, the applicant will receive a First Action Interview Office Action with an interview summary. This document will be treated as the first office action for the application. The applicant’s response to the First Action Interview Office Action will be due one month or 30 days, whichever is longer, after the action’s mail date.
In short, this new procedure opens the door to a dialogue with the examiner even before a first office action is received. One potential benefit that can be realized is the opportunity for an extra round of communication with the examiner before a “final” action is received on the application. Despite such benefits, the USPTO will not accelerate the examination of the application out of turn as a result of participation in this program.
This pilot program may be of interest to Fitch Even clients who prosecute patent applications. The program is scheduled to end on May 16, 2012, the deadline before which any requests for a first action interview must be filed.
Additional details about this expanded program can be found here. If you have questions regarding any aspect of the program, please contact Fitch Even partner Nicholas T. Peters, the author of this alert.