US Patent and Trademark Office Expands First Action Interview Pilot Program to all Utility Technical Areas

This month David Kappos, the Director of the US Patent and Trademark Office (USPTO) has expanded the First Action Interview Pilot Program to all utility technical areas.  The announcement can be found here.    Early Interviews concerning the pending patent application provide advantages to both the applicant and to the USPTO, including:

(1) the ability to advance prosecution of an application;

(2) enhanced interaction between applicant and the examiner;

(3) the opportunity to resolve patentability issues one-on- one with the examiner at the beginning of the prosecution process; and

(4) the opportunity to facilitate possible early allowance.

Prior to the First Action Interview Program, granting of an interview before the first action on the merits of a new application was given at the discretion of the patent examiner.  Under the program, the examiner must grant the interview request if the following requirements are met:

(1)  The application must be a non-reissue, non-provisional utility application filed under 35 U.S.C. 11 1 (a), or an international application that has entered the national stage in compliance with 35 U.S.C. 371(c).

(2) The application must contain three or fewer independent claims and twenty or fewer total claims.

(3) The claims must be directed to a single invention.

(4) The request for a first action interview must be filed electronically using the USPTO’s electronic filing system, EFS-Web.

(5)  The request must be filed at least one day before a first Office action on the merits of the application appears in the Patent Application Information Retrieval (PAIR) system.

(6)  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 program offers advantages, it is critical that all parties are focused on the claims of the subject matter of the patent application in relation to both the patent application and the prior art.   Because the request must be made prior to the first Official Action, it is important to be sure that a search of the prior art has been conducted by the patent examiner prior to the interview.    Under the pre-interview procedure, the patent examiner will conduct a search of the invention prior to the interview.  Depending on the results of the search, the examiner may determine that allowable subject matter exists and an interview is not necessary.  Or the examiner may find prior art that forms the basis for one or more rejections or objections, in which case the applicant will be given an extendable time period to respond and to schedule an interview.    If an interview is scheduled however, the applicant’s options are limited so depending upon the results of the examiner’s search, the application may opt to not have the interview at all and have the examiner issue a traditional First Official Action.