The First Action Interview Pilot Program permits an applicant to conduct an interview with the examiner before the first Action on the merits is issued. Previous pilot programs were limited to applications with certain filing dates assigned to certain technology centers, but the USPTO now has opened the program to include all utility applications in all technology areas, regardless of filing date. As set forth in the recent press release, the expanded pilot program will run through May 16, 2012.
Requesting A First Action Interview
As set forth in the USPTO's guidance, the following requirements must be satisfied in order to obtain a First Action Interview:
- The application must be a non-reissue, non-provisional utility application.
- The application must contain three or fewer independent claims, twenty or fewer total claims, and no multiple dependent claims. (A Preliminary Amendment can be filed to satisfy this requirement.)
- The claims must be directed to a single invention, or the applicant must make an election without traverse or withdraw the application from the pilot program.
- A Request for a First Action Interview (form PTO/SB/413C) must be filed electronically using the USPTO's electronic filing system, EFS-Web.
- The Request must be filed at least one day before a first Action on the merits appears in the Patent Application Information Retrieval (PAIR) system.
- The Request 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.
The Pre-Interview Communication
The First Action Interview program will not advance an application out of turn for examination. Instead, when the examiner takes the application up for examination in its normal time, the examiner will conduct a prior art search (as usual), and issue a Pre-Interview Communication citing the prior art references and identifying any rejections or objections. The Pre-Interview Communication will set a response period of one month or thirty days, whichever is shorter, extendable for one additional month.
(If the examiner determines that the application is in condition for allowance or could be with minor amendments, the examiner may bypass the Interview and allow the application, or contact the applicant and conduct a regular interview to try to place the application in condition for allowance.)
Response To The Pre-Interview Communication
An applicant has three options for responding to the Pre-Interview Communication:
- File a request to waive the First Action Interview, in which case the examiner will issue a First Action Interview Office Action.
- File a Reply under 37 CFR § 1.111 waiving the First Action Interview, in which case the Pre-Interview Communication will be treated as the first Office Action on the merits.
- Schedule the First Action Interview by electronically filing an Applicant Initiated Interview Request Form (PTOL-413A), accompanied by a proposed amendment and/or arguments addressing the issues raised in the Pre-Interview Communication. The interview should be scheduled within two months.
The First Action Interview
The USPTO indicates that the First Action Interview should focus on the following:
- A discussion to assist the examiner in developing a better understanding of the invention.
- A discussion to establish the state of the art at the time the invention was made, including the prior art references cited by the applicant and the examiner.
- A discussion of the features of the claimed subject matter which make the invention patentable, including any proposed amendments to the claims.
If agreement is reached during the Interview that all claims are in condition for allowance, the Examiner should complete an Interview Summary to that effect, and process a Notice of Allowance.
If agreement is not reached, the examiner will issue a First Action Interview Office Action, which is treated as the first Office Action on the merits. The First Action Interview Office Action will set a response period of one month or thirty days, whichever is longer, extendable for one additional month.
Alternatively, the applicant may elect to have any pre-Interview submission treated as the required reply (if it addresses all of the issues). In this case, the Pre-Interview Communication will be treated as the first Office Action on the merits. The examiner will enter the pre-Interview amendments/arguments and proceed with examination, such as by issuing a subsequent (and possibly "final") Office Action.
Benefits Of First Action Interview
According to the USPTO, the First Action Interview Program may offer several benefits including:
- The ability to advance prosecution of an application.
- Enhanced interaction between the applicant and the examiner.
- The opportunity to resolve issues one-on-one with the examiner early in prosecution.
- The opportunity to facilitate early allowance.
The recent press release states:
Approximately 34 percent of the applications in the First Action Interview Pilot Programs were allowed on the first action on the merits, as compared to approximately 11 percent on average across all technologies for new non-continuing applications."
Another Interesting Option
While the USPTO has outlined detailed requirements and procedures for the First Action Interview Program, the program probably is not as complicated as it may sound. The program could be suitable for many applications, as long as the limit on the number of claims is not too restrictive for the invention at hand, and as long as the applicant is prepared to act quickly.
The program appears to offer real value in the possibility of understanding the examiner's position early in prosecution. If minor issues can be resolved before the First Interview Office Action is issued, the remaining substantive issues can be addressed in the next reply, and significant progress can be made before a final Office Action is issued. In contrast, under the normal course of prosecution, the true points of contention may not be apparent until a final Office Action is issued, at which time applicants' response options are limited by 37 CFR § 1.116.