By Donald Zuhn --
The U.S. Patent and Trademark Office announced today that it is expanding the Enhanced First Action Interview pilot program to include all utility applications in all technology areas and filing dates. Like its predecessor programs, under the Full First Action Interview pilot program, an applicant is entitled to a first action interview, upon request, prior to the first Office action on the merits. The new pilot program is scheduled to run through May 16, 2012.
The Office initiated the initial First Action Interview pilot program (see "PTO Announces New Program to Reduce Pendency and Improve Patent Quality") in April 2008. Under the original pilot program, an examiner assigned to a participating application conducted a prior art search and provided 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 either scheduled a first action interview or decided not to have the interview. If the applicant chose the latter option, the examiner issued a First Action Interview Office action giving the applicant the longer of one month or 30 days to reply. If agreement could not be reached during the first action interview, the First Action Interview Office action was issued (with the reply period specified above).
In October 2009, the Office expanded the First Action Interview pilot program to encompass additional technology areas (see "USPTO Expands First Action Interview Pilot Program"). One year after expanding the program, the Office extended the ending date of the pilot program from April 1, 2010 to October 1, 2010 (see "USPTO Announces Extension of Enhanced First Action Interview Pilot Program"). More recently, the Office revised the eligibility requirements to include utility nonprovisional applications that were filed three months later than the previously listed dates (see "USPTO Extends Enhanced First Action Interview Pilot Program").
Until today's expansion of the program, biotech and pharma patent practitioners were limited to seeking participation for applications assigned to the 161X (drug, bio-affecting and body treating compositions) and 1795 (chemistry: electrical current producing apparatus, product, and process) art groups. Under the Full First Action Interview pilot program, however, subject matter and filing date restrictions have been removed. Other than expanding the program to encompass all technology areas and filing dates, the process remains unchanged from the process used during the Enhanced First Action Interview Pilot Program that ended April 1, 2011.
In the Office's announcement, it noted that 34% of applications participating in prior iterations of the program were allowed on the first action on the merits as compared with the approximately 11% of applications that are allowed on the first action on the merits on average across all technologies for new non-continuing applications.
Additional details regarding the Full First Action Interview pilot program can be found in a pre-OG notice issued by the Office. This notice indicates that applicants wishing to secure a non-discretionary interview before the first action on the merits must electronically file a request (preferably using Form PTO/SB/413C). Following this request, the Full First Action Interview process would proceed as outlined above for the original program. To participate in the program, the following requirements must be met:
(1) The application must be a non-reissue, non-provisional utility application filed under 35 U.S.C. § 111(a), or an international application that has entered the national stage in compliance with 35 U.S.C. § 371(c).
(2) The application must contain three or fewer independent claims and twenty or fewer total claims, and no multiple dependent claims (applicants may file a preliminary amendment in order to comply with this requirement).
(3) The claims must be directed to a single invention (if the Office issues a restriction requirement, the application will be removed from the program; if an oral election without traverse is made during a telephone interview, the application will remain in the program).
(4) The request for a first action interview must be filed electronically, preferably using Form PTO/SB/413C.
(5) The request 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.
(6) The request for a first action interview must include a statement that applicant agrees not to file a request for a refund of the search fee and any excess claim fees paid in the application after the mailing or notification date of the Pre-Interview Communication (the Office notes that any petition for express abandonment under 37 C.F.R. § 1.138(d), request for a refund of search fee, and any excess claim fees filed after the mailing or notification date of a Pre-Interview Communication will not be granted).
The pre-OG notice also indicates that:
• The time period for scheduling an interview following the issuance of the Pre-Interview Communication may be extended for one additional month pursuant to 37 C.F.R. § 136(a).
• Interviews must be scheduled electronically using the Applicant Initiated Interview Request Form (PTOL-413A). The applicant must propose an interview date within the longer of two months or 60 days from the filing of the Applicant Initiated Interview Request Form.
• Amendments filed between the issuance of the Pre-Interview Communication and the interview will not be entered unless approved by the examiner. At the examiner's discretion, however, an amendment may be entered if it is clearly limited to the cancellation of claims, adoption of examiner suggestions, placement of the application in prima facie condition for allowance, or correction of informalities.
Additional details regarding the program can be found in the pre-OG notice.
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