USPTO Expands First Action Interview Pilot Program

    By Donald Zuhn –-

On Thursday, the U.S. Patent and Trademark Office announced that it was expanding the First Action Interview pilot program to encompass additional technology areas effective October 1, 2009.  The pilot program, which began on April 28, 2008, allows applicants of certain applications to interview their cases prior to the issuance of a first Office action on the merits.

Under the initial pilot program, an examiner assigned to a participating application conducts a prior art search and provides 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 then either schedules a first action interview or chooses not to have the interview.  If the applicant chooses the latter option, the examiner issues 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 is issued (with the reply period specified above).  Under the extended pilot program, the Office has made a few improvements to the process, including allowing applicants to extend the above reply period by 30 days.  Other changes can be found here.  Additional information regarding the expanded pilot program can also be found here.

Under the initial pilot, the program was limited to two technology areas:  Class 709 (electrical computers and digital processing systems: multi-computer data transferring) and Class 707 (data processing: database and file management or data structures).  Because the initial program "has shown that the patent process benefits when interaction between the applicant and the examiner are enhanced at the beginning of examination because patentability issues can be resolved early when the applicant and the examiner discuss them one-on-one," the program is being expanded to encompass the following art units:

• 161X -- applications filed on or before November 1, 2006
• 1795 -- appilications filed on or before October 1, 2006
• 215X and 216X -- applications filed on or before February 1, 2008
• 244X and 245X -- applications filed on or before July 1, 2008
• 2617 -- applications filed on or before June 1, 2007
• 2811-2815, 2818, 2822-23, 2826, and 2891-2895 -- applications filed on or before May 1, 2008
• 3671 -- applications filed on or before December 1, 2007
• 3672 -- applications filed on or before January 1, 2008
• 3673 -- applications filed on or before November 1, 2007
• 3676 -- applications filed on or before February 1, 2008
• 3677 -- applications filed on or before July 1, 2007
• 3679 -- applications filed on or before November 1, 2007
• 3735 -- applications filed on or before May 1, 2006
• 3736 -- applications filed on or before April 1, 2007
• 3737 -- applications filed on or before December 1, 2006
• 3768 -- applications filed on or before August 1, 2006
• 3739 -- applications filed on or before December 1, 2006
• 3762 and 3766 -- applications filed on or before September 1, 2007
• 3769 -- applications filed on or before September 1, 2006

In its announcement regarding the expansion of the program, the USPTO indicated that the allowance rate for applications involved in the pilot program was six times higher than the allowance rate for applications in the same technology area that were not involved in the pilot program.  Explaining the success of the pilot program, USPTO Director David Kappos said that "[w]hen people talk to one another and listen to one another they can quickly understand points of agreement as well as differences, and resolve those differences in real-time," and added that "interviews present a clear path to resolve issues and move prosecution forward quickly."

For additional information regarding this topic, please see:
• "PTO Announces New Program to Reduce Pendency and Improve Patent Quality," April 15, 2008

Comments

[Patent Lawyer Pittsburgh]

"The allowance rate for applications involved in the pilot program was six times higher than the allowance rate for applications in the same technology area that were not involved in the pilot program" sounds pretty promising. It will be interesting to see over time if the results are the same when more technology areas are included.