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April 15, 2008

First Action Interview Pilot

The USPTO is launching a new pilot program granting examiner interviews prior to a first office action on the merits. The PTO claims the program will "reduce pendency and improve patent quality" by "enhancing information exchange between applicant and examiner and promoting early resolution of outstanding issues". Increasing communication between applicant and examiner is finally a step in the right direction, but it remains to be seen if this early interview process will effectuate any real change, or if the already present "reject, reject, reject" mentality will cause the interview process to be as difficult as selling ice to Eskimos.

From the PTO announcement:

The Commerce Department's United States Patent and Trademark Office (USPTO) today announced that it is initiating a six-month pilot program that will allow an applicant to have an interview with the patent examiner prior to the first Office action on the merits in a new utility application. The First Action Interview Pilot program will expedite prosecution of the patent application by enhancing the interaction between the applicant and the examiner, providing the applicant an opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the review process. The program will begin on April 28.

"As we have learned from our Accelerated Examination program, an interview between the applicant and examiner early in the review process can help resolve issues more quickly and expedite a final decision," said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Jon Dudas. "We believe the enhanced information exchange in the First Action Interview Pilot program will offer dual benefits of reduced pendency and improved patent quality."

Although an interview prior to a first office action is currently available by request, the pilot prevents the examiner from turning down such a request:

Currently, an applicant may request an interview prior to a first action. Granting of an interview is within the discretion of the examiner who has not yet reviewed the case, and the applicant may be required to identify relevant documents and explain how the invention is patentable over these documents.

Under the pilot program, the examiner will conduct a prior art search and provide the applicant a pre-interview communication which is a condensed preview of objections or rejections proposed against the claims. Within 30 days from the issue date of the pre-interview communication, the applicant must either choose not to have a first action interview with the examiner, or schedule the interview and file a proposed amendment and/or remarks.

The program is designed to help reduce pendency by shortening the applicant response period:

Should the applicant choose not to have a first action interview, a First Action Interview Office action will be promptly issued and the applicant will have one month or 30 days, whichever is longer, to reply. If an interview is scheduled, the applicant must be prepared to discuss issues related to the patentability of the claims. In this interview, if the applicant and the examiner reach agreement on all claims in regards to patentability, a notice of allowance will be issued. If agreement is not reached on all claims in regards to patentability, the applicant will be given a courtesy copy of a First Action Interview Office action setting forth any requirements, objections and rejections to which the applicant will be given one month or 30 days, whichever is longer, from the issue date of the First Action Interview Office action to reply, with limited extensions of time. It is this First Action Interview Office action that is considered the first action on the merits in the application.

The pilot is of course limited:

This pilot is currently limited to two technology areas to facilitate the USPTO's ability to gauge the success of the pilot: applications classified in Class 709 (electrical computers and digital processing systems: multi-computer data transferring) and applications in Class 707 (data processing: database and file management or data structures). For details regarding eligibility and criteria for participation in the pilot, see the USPTO Web site, at www.uspto.gov/web/offices/pac/dapp/opla/preognotice/faipp_v2.htm.

To be eligible for the pilot:

New utility applications that fall within either Group I or Group II as outlined below may be eligible for the First Office Action Interview Pilot Program:

Group I:

  1. Filed on or before September 1, 2005, and prior to a first action on the merits;
  2. Classified in Class 709 (Electrical Computers and Digital Processing Systems: Multi-Computer Data Transferring); and
  3. Assigned to an art unit in either working group 2140 (group art unit 214x) or 2150 (group art unit 215x).

Group II:

  1. Filed on or before November 1, 2006, and prior to a first action on the merits;
  2. Classified in Class 707 (Data Processing: Database and File Management or Data Structures); and
  3. Assigned to an art unit in working group 2160 (group art unit 216x).

The success of this pilot hinges on the openness in the communication between applicant and examiner. Examiners must open themselves to the possibility that some inventions are novel and therefore patentable, while applicants must understand that many inventions are not novel nor non-obvious, especially when claimed as broadly as the side of a barn. But with flexibility and understanding between parties, applicants and examiners could both potentially win.

The full notice

Posted by Mr. Platinum at April 15, 2008 3:54 PM | Prosecution


I don't think this program will be particularly successful. Sometimes (frequently) EPO/PCT search reports contain good references. It's no secret examiners cheat off of them on occasion. Practitioners could save their clients' time and money by filing a preliminary amendments, but for whatever reason never do. Maybe they want to have the PTO articulate a position first. This program isn't going to change the fact that interviews for applications with broad claims early in the process aren't always productive.

Posted by: 2600examiner at April 15, 2008 5:38 PM

I often get cases where a preliminary amendment has been filed in reaction to art cited in a PCT or EPO search report.

Posted by: Examiner Y at April 15, 2008 6:53 PM

Once again, PTO management manages to take a good idea that the patent bar has been asking for for years, and then implement it in a way that strips out the major value, and focuses resources on the least valuable applications.

In a part of the notice that our blogmaster did not include, the PTO announces that a pre-exam interview is only available for applications with no more than 3 independent claims and 20 total claims. Why limit it this way?

There is a simple fact of patent economic life that (apparently) no one at the PTO gets. Big applications (many claims, large spec, many references) get that way for only one reason: the applicant invested a lot of money in this application to get it claimed thoroughly, described thoroughly, and prior-art-searched thoroughly BECAUSE IT'S A VALUABLE APPLICATION DIRECTED TO AN IMPORTANT INVENTION. Big applications are not acts of aggression against the PTO, they are the applications that give the public the most benefit of the patent bargain. The PTO gets proportionally much higher fees for big applications (because many more big applications generate full maintenance fee income). Big applications should receive proportionally *more* time per claim, not less.

Big applications are almost always the ones that are most at the cutting edge, and where the examiner is most likely to not appreciate the claims or the disclosure without some hand-holding from the applicant. Big applications are the ones with the most complexity that could most benefit from some teaching-and-explanation discussion with the applicant.

Limiting pre exam interviews to only the *least* important applications (that is, 3/20) is another example of PTO management's misallocation of resources because of PTO management's lack of "professional background and experience in patent law" and lack of understanding of the economics of patents. Big applications are the ones where a little education of the examiner before examination will pay the most benefit in efficiency, by helping the examiner understand the unfamiliar language in the claims, and focus on the key feature. An interview is also the single best way I know of to help the examiner get it right the first time. It's the only way I know of to let the examiner ask questions and get answers in a back-and-forth dialog. Waiting until after the first Action (which, in 3620/3690, 70% of the time reflect complete lack of understanding by the examiner of basic terms of art and the like) to get the examiner focused is a waste for all concerned.

"Focused examination" is incredibly important to everyone, especially those applicants with important inventions. Why does the PTO take every opportunity to avoid it?

Posted by: David Boundy at April 16, 2008 8:20 AM

Why must the USPTO keep trying to fill the cracks in the dyke instead of building a nice strong, Hoover Dam-esque bulkhead to shore up their ailing system? Duct tape does not seem to be the correct fix for the pendency problem. How many millions are lost due to the slowness of the patent process? Maybe we could ask the Chinese how much, as they seem to be profiting from this little problem.

Posted by: Anthony Kuhn at April 16, 2008 11:34 AM