By Joseph (Joe) M. Maraia, Christopher (Chris) E. Everett and Katherine A. Wrobel
On May 16, 2011, The United States Patent and Trademark Office (USPTO) announced an expansion of the Enhanced First Action Interview Pilot Program (“Initial Pilot Program”). In an effort to foster increased communication between applicants for utility patents and patent examiners, the Full First Action Interview Pilot Program (“Full Pilot Program”) is now expanded to all utility areas, all filing dates and is extended from April 1, 2011 to May 16, 2012.
The Full Pilot Program is intended to enhance interaction between an application and examiner, thereby resolving patentability issues either completely or substantially at the beginning of the prosecution process. To date, the Initial Pilot Program, which was limited to only certain utility areas, advanced prosecution of cases, has led to first action allowance in 34% of all pilot program cases, which is a substantial improvement over the standard 11% first action allowance rate.
Whereas granting an interview before a first action on the merits of an application typically is at the discretion of the examiner, the Program makes granting an interview non-discretionary.
Requirements for Qualification
To qualify for the Full Pilot Program, the patent application must be a non-reissue, non-provisional utility application or national stage application. The Full Pilot Program also has the following requirements: (i) claims must be 20 or fewer in number; (ii) the claims must contain 3 or fewer independent claims; (iii) the claims must contain no multiple dependent claims; and (iv) all claims must be directed toward a single invention. If the USPTO issues a restriction requirement, the Applicant must elect claims pertaining to a single invention without traverse. If the Applicant chooses to not make the election without traverse, the patent application will be removed from the Full Pilot Program.
In addition to the requirements above, the applicant must make a statement in the electronic request waiving any requests for refunds of the search fee or excess claims fees paid after the mailing of the date of a Pre-Interview Communication, mailed in response to a request to enter the Program. (For convenience, the statement is included on the electronic form request form PTO/SB/413C.) The applicant further waives any right to express abandonment and refund of fees.
How Does An Applicant Enter the Program?
An applicant wishing to enter the program must file an electronic request for a First Action Interview using PTO Form PTO/SB/413C (“Request for First Action Interview Pilot Program”) within at least one day before a first office action on the merits of the application appears online in the Patent Application and Information Retrieval (PAIR) system. The request is without fee and requires no Petition to Make Special. If the request contains any deficiency, the USPTO will provide notice and a one month time limit for correcting the deficiency. Absent correction, the application will be ineligible for participation in the program and the examiner will issue a first action on the merits in due course.
Once an applicant electronically requests entry of a qualify application into the Full Pilot Program, the examiner prepares and transmits a Pre-Interview Communication providing prior art search results and any rejections and/or objections.
The applicant must respond in one of three ways within 30 days of the issue date of the Pre-Interview Communication. (This time period is extendable by one month for fee under 37 CFR 1.136(a).) The applicant may take one of the following actions:
- Electronically file a request to waive the First Action Interview using the EFS filing system. If the request is made after the Pre-Interview Communication is prepared, the request for withdrawal from the Program will constitute a request to forgo an interview and the Pre-Interview Communication will enter as a first action on the merits.
- File a standard written reply under 37 CFR 1.111 within the time period for response to the Pre-Interview Communication, thereby accepting the Pre-Interview Communication as a first action on the merits. This could lead to a final Office action as the second action on the merits.
- Schedule an interview with the examiner within 60 day or 2 months from the Request Form filing date. This scheduling requires the application to submit PTO form PTOL-413A (“Applicant Initiated Interview Request Form”) along with a proposed amendment and/or arguments labeled as such (“PROPOSED”) in either the header or footer. The applicant must contact the examiner to confirm the interview date.
Following the interview, the examiner will either (i) issue a Notice of Allowance and enter any agreed upon amendments; or (ii) the examiner will issue a First Action Interview Office Action along with an interview summary. As with other examiner interviews, the applicant must make a written statement as to the substance of the interview.
Worth noting here is that the content of the proposed amendment and/or written remarks submitted for discussion will be entered into the record. The applicant should carefully submitted amendments/remarks so as to prevent any potentially deleterious prosecution history estoppel.
Patentees, applicants, and agents/attorneys will need to consider preparing applications and claims therein for qualification under the Full Pilot Program requirements. Such preparations are possible either prior to filing or, in pending cases having no first action on the merits, through Preliminary Amendment. Especially important to note is the increased first office action allowance of 34% for all pilot program cases. If this increased rate of allowance continues, the Full Pilot Program could help decrease prosecution time for submitted patent applications. Also important to note is that acceptance into the Full Pilot Program does not advance a patent application out of turn for examination. Rather, acceptance into the Full Pilot Program hopefully decreases prosecution time after the USPTO starts examination of the patent application.
For further information or for assistance, please contact a member of the Pierce Atwood Intellectual Property & Technology Group.