What you need to know

The USPTO has announced that it will now permit applications in any technology area to be included in its First Full Action Interview program, which provides an interview with the patent examiner prior to substantive examination and improves the odds of first action allowance (33% vs 11% under “ordinary” examination).

What you need to do

Review your portfolio to consider whether there are cases for which rapid examination would be beneficial, and which are amenable to focused claiming.  Note that requests for acceptance into the program can be filed in pending applications (before first office action) as well as in new filings.

The USPTO has recently expanded its First Full Action Interview pilot program to include all technology groups.  Previously, the pilot program was restricted to specific technology areas (e.g., biotechnology, telecommunications, electro-chemistry).  Additionally, the program was restricted to applications with particular filing dates which varied based on technology area.

The newly expanded program provides patent applicants access to the program regardless of the technology or filing date.  The program provides an opportunity for applicants to discuss their patent filings with the patent examiner before any office actions are mailed.  Prior to such an interview, the examiner performs an initial search to identify relevant prior art and provides the applicant with a “pre-interview communication” that identifies the prior art and outlines potential rejections.  The applicant has 30 days after receiving the pre-interview communication to request an interview, which must then take place within 60 days of filing the request.  In cases where the interview does not result in allowance of the claims, the examiner will issue a First Action Interview Office Action and the applicant will have only 30 days to respond.  Likewise, a First Action Interview Office Action with a 30-day response deadline will also be sent in instances where the applicant cancels the interview or fails to respond to the pre-interview communication.

Participation in the program will be limited to cases with a focused claim set.  Specifically, the application must contain fewer than 20 claims, and a maximum of three independent claims; all of the claims must also be directed to the same invention.  Claims in pending cases can be amended via a preliminary amendment to meet these criteria.  To initiate the program, applicants must file a request electronically at least one day before the first office action is posted.  There are no fees to participate in the program.

Based on experience with the initial technology-restricted pilot program, the USPTO reports that 33% of the applications in the First Full Action Interview program are allowed in the first office action.  Only 11% of cases outside the program have such success.