The United States Patent and Trademark Office (USPTO) recently implemented a pilot program permitting patent applicants to request and conduct an examiner interview prior to the issuance of a first Office Action on the merits in certain pending computer and database-related applications. Currently, the granting of an interview prior to a first Office Action is within the discretion of the examiner; however, under the pilot program, the granting of an interview will be non-discretionary. The interview is designed to assist the examiner in developing a better understanding of the claimed invention, establish the state of the art at the time of the invention, and facilitate discussion of potentially patentable features of the invention, including any proposed amendments to the claims. The pilot program is limited to certain pending applications related to computer or data processing inventions and is intended to expedite the prosecution of these applications. The pilot program is currently in effect and will terminate November 1, 2008.

Utility patent applications in two groups are eligible for the pilot program. Group one encompasses applications filed on or before September 1, 2005, classified in Class 709 (Electrical Computers and Digital Processing Systems: Multi-Computer Data Processing), and assigned to an art unit in either working group 2140 or 2150 (group art units 214x or 215x). Group two includes applications filed on or before November 1, 2006, classified in Class 707 (Data Processing: Database and File Management or Data Structures), and assigned to an art unit in working group 2160 (group art units 216x).

Eligible applicants desiring to participate in the pilot program must file an electronic request for a first action interview with the USPTO before issuance of a first Office Action on the merits. With the request, the applicant agrees not to file a request for a refund of the search fee and any excess claim fees paid in the application following the issue date of a Pre-Interview Communication. Eligible applications must be a non-reissue non-provisional utility application filed under 35 U.S.C. 111(a), or international application that has entered the national stage in compliance with 35 U.S.C. 371(c). Furthermore, eligible applications must contain three or fewer independent claims and twenty or fewer total claims. For some pending applications, the USPTO has mailed notices to the applicants indicating that applications are eligible for participation in the pilot program.

Once an eligible application is approved for the pilot program and taken up for examination, an examiner will conduct a prior art search and provide the applicant with a Pre-Interview Communication with citations to references from the search and an identification of any potential rejections and/or objections. Within a non-extendable one-month period of time after mailing of the Pre-Interview Communication, the applicant must either request not to have a first action interview or request an interview and file a proposed amendment or arguments for patentability. The failure to respond to the Pre-Interview Communication will result in abandonment of the application. If a request to not have an interview is filed, then the examiner will issue an Office Action, and the applicant will have one month to respond to the Office Action. The period for response may be extended for an additional month only. The response time period is shorter than the response period of three months, extendable for up to three additional months, provided for Office Actions issuing in non-pilot program examinations.

If an applicant requests an interview, a proposed date for the interview must be provided with any proposed amendments or arguments. The proposed date can be no more than two months from the date of the Pre-Interview Communication. The interview can be conducted in person, by telephone, or by video-conference. During the interview, the applicant must be prepared to discuss the prior art of record, any previously submitted proposed amendments or remarks, and any potential rejections or objections with the intent to clarify and resolve issues with respect to patentability. If an agreement is reached that the application is in condition for allowance, then the examiner will complete an Interview Summary and issue a Notice of Allowability. Otherwise, the examiner will complete an Interview Summary and issue an Office Action. The applicant will have one month, extendible for one additional month, to respond to the Office Action. In any instance, a complete written statement as to the substance of the interview with regard to the merits of the application must be made of record, whether or not an agreement is reached with the examiner.

The USPTO implemented the pilot program in an attempt to expedite the prosecution of certain patent applications. It is believed that enhanced communication between applicants and examiners offers dual benefits of reduced application pendency and improved patent quality. Although applicants that participate in the pilot program must agree to a shorter timeline for responding to Office Actions, the improved communication with the examiner may help to avoid initial misunderstandings regarding the claimed invention and alleged prior art.