USPTO News: PTO Announces New Program to Reduce Pendency and Improve Patent Quality

    By Donald Zuhn --

On Monday, the U.S. Patent and Trademark Office announced that it will be initiating a new pilot program that is expected to reduce application pendency and improve patent quality.  The First Action Interview pilot program, which will begin on April 28th and run for six months, will allow applicants of certain applications to interview their cases prior to the issuance of a first Office action on the merits.  The Patent Office believes the pilot program will expedite prosecution of participating applications by enhancing interactions between applicants and examiners and promoting early resolution of outstanding issues.

Under the pilot program, an examiner assigned to a participating application will conduct a prior art search and provide the applicant with a pre-interview communication containing a condensed preview of objections or rejections against the claims of the participating application.  Within 30 days from the issuance of the pre-interview communication, the applicant must either schedule a first action interview or choose not to have the interview.  If the applicant chooses the latter option, the examiner will issue a First Action Interview Office action giving the applicant the longer of one month or 30 days to reply.  If agreement cannot be reached during the first action interview, the First Action Interview Office action will be issued (with the reply period specified above).

To help the Patent Office better gauge the success of the pilot program, it is being limited to two technology areas  -- neither of which is TC 1600.  In particular, eligible applications must be classified in Class 709 (electrical computers and digital processing systems: multi-computer data transferring) or Class 707 (data processing: database and file management or data structures).  However, biotech and pharma patent prosecutors will want to keep an eye on the pilot program, since a successful trial run will likely lead to an expansion of the program to other technology areas.

Additional information regarding the pilot program can be found here, or at the pilot program's website.  In the event that the pilot program becomes permanent, or is expanded to TC 1600, Patent Docs will provide more information regarding the First Action Interview process.

Comments

[Joe]

Do you know how they will pick which applications are used in this program? Do you have to petition to have your application examined in this manner?

[Donald Zuhn]

Joe:

An application must satisfy the requirements set forth on the FAI website (see link in post) and the applicant must file a request for FAI (http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/fai_request_form.pdf). According to the request, it looks like applications that satisfy the above eligibility requirements, have 3 or fewer independent claims, 20 or fewer total claims, and no multiple dependent claims will qualify.

Don

[David Boundy]

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.

The Notice states 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 back-and-forth 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 efficient way I know of to give the examiner the precise information he/she needs to do a quality job efficiently. 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 PTO management take every opportunity to avoid it?