The U.S. Patent and Trademark Office (USPTO) recently announced the Full First Action Interview Pilot Program, which is an expansion of the Enhanced First Action Interview Pilot Program. The Full First Action Interview Pilot Program, like the previous pilot programs, provides an applicant with the opportunity to discuss an application with a patent examiner before the issuance of a first Office action on the merits. Specifically, the USPTO has expanded the Enhanced First Action Interview Pilot Program to include all technology areas and extended the program until May 16, 2012. Participants in these programs to date have enjoyed success in obtaining patents. The USPTO press release announcing the expansion of the pilot program notes that approximately 34 percent of applications in the initial pilot program were allowed on the first action on the merits, in contrast to only about 11 percent for initial (non-continuing) applications that were not in the pilot program.
Benefits of Participation
Participation in the Full First Action Interview Pilot Program may result in greater success in obtaining immediate allowance when patent applications are examined. As noted above, in previous interview pilot programs limited to certain technology fields, approximately 34 percent of the applications were allowed on the first action on the merits. In contrast, approximately 11 percent of non-continuing applications across all technology fields are allowed on the first action on the merits. This increased success rate will likely continue with the expanded pilot program. Participants also may experience: “(1) the ability to advance prosecution of an application; (2) enhanced interaction between the 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 early allowance.”1 Ultimately, participation in the expanded pilot program allows the applicant’s attorney to tell the examiner directly why a patent should be granted earlier in the prosecution process, which may expedite and facilitate the issuance of applications claiming new and non-obvious technology. No additional fees to the USPTO are required to participate in the Full First Action Interview Pilot Program.
How to Participate
The Full First Action Interview Pilot Program only applies to non-provisional utility patent applications. The applicant must limit the number of claims to three or fewer independent claims and not more than twenty claims total, all directed to a single invention. In addition, the applicant must agree to make an election without traverse if faced with a restriction requirement. The request for a first action interview must be filed electronically and 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. The applicant must also agree not to file a request for a refund of the search fee and any excess claim fees paid after the date of the examiner’s communication (the Pre-Interview Communication) following the applicant’s request to participate in the program.
If an applicant opts to participate in the Full First Action Interview Pilot Program and the application has met the above requirements, the examiner will conduct a prior art search and provide the applicant with a Pre- Interview Communication, which includes citations to prior art references and identifies any rejections and/ or objections. The applicant then has one month or thirty days, whichever is longer, to either schedule the interview (by filing an Applicant Initiated Interview Request Form with proposed amendments or remarks), or waive the first action interview. In the alternative, the applicant may file a reply, which results in waiving the first action interview and a subsequent First Action Interview Office Action, and accepting the Pre-Interview Communication as the first Office action on the merits.
If the applicant opts to continue and schedule the interview, the applicant must propose a date for the interview within two months or sixty days from the filing of the Applicant Initiated Interview Request Form. Failure to conduct the interview within two months or sixty days, whichever is longer, from the filing of an Applicant Initiated Interview Request Form will be treated as a failure to respond to the Pre-Interview Communication, which ultimately results in the examiner preparing and entering a First Action Interview Office Action with a shortened due date for response, and the applicant losing the benefit of an early interview with the examiner.
Although the expanded interview pilot program may be beneficial to some applicants, there are important limitations to consider. Specifically, an application directed to a complex invention may be limited by the claim number limitation, so an applicant should balance the benefits of possible expedited issuance against the disadvantages of having a limited numbers of claims. Some participants will solve this dilemma by filing a continuation application to expand the number of claims covering an invention if the initial application is approved. The claim number limitation, however, coincides with the number of claims an applicant receives with the basic filing fee. Potential applicants should also consider the fact that participation in the Full First Action Pilot Program does not advance a patent application out of turn for examination. Rather, the examination of the application will most likely occur in the order of its effective filing date, and thus, the benefit of participation in the Full Pilot Program lays in the likelihood of a shorter prosecution time after the examiner picks up the application for examination.
In conclusion, an applicant should consider participation in the Full First Action Interview Pilot Program if there is significant value in more quickly protecting the invention initially with a limited number of claims. Participation in the Full First Action Interview Pilot Program is no longer limited to certain technology areas, but is now a beneficial option available to all applicants. Further, if there is a significant risk of infringement during the pendency of the patent application, the applicant should consider participation in the pilot program to expedite prosecution, as no additional fees are required to the USPTO.