USPTO Extends First Action Interview Pilot Program

On July 9, 2012, the United States Patent and Trademark Office (USPTO) announced that they are extending the First Action Interview (FAI) Pilot Program.  The extension of the program will be in conjunction with a comprehensive review of the program to determine whether any adjustments should be made to the program.  Further inquiry will be made into whether the program should be extended further or made permanent.  During its review, the Office will consider feedback from both internal and external stakeholders. Accordingly, in addition to announcing the extension of the program, the Office is requesting comments on the program.

The FAI Pilot Program is intended to expedite disposition of an application by enhancing communication between an applicant and an examiner at the beginning of the examination process. Specifically, the program allows an applicant to have an interview with an examiner prior to the issuance of an Office action, but after receiving the examiner’s search results and initially identified issues. It is the belief of the USPTO that by fostering this early communication the patent practitioner can bring the patent examiner up to speed quickly on the substance of the invention, while the patent examiner can discuss the prior art with the practitioner in an effort to crystalize issues before work even begins on a First Office Action.

Since this Pilot Program became available to all utility patent applications in 2011, the Office has received over 2,100 requests to participate in the program. Of the applications that have been taken up for examination since the expansion, the Office has allowed over 35% on first action. Such a high rate of first action allowances is something that simply cannot be ignored.

Today when so many clients need patents as quickly as possible, particularly after they may have waited years for a First Office Action, it seems that more should be seeking to discuss their case with the examiner generally before the First Office Action.  The success of the program can hardly be questioned.  If you are not getting 35% first allowances then what are you waiting for?

The Office is extending the FAI Pilot Program until August 16, 2012, while it completes its evaluation of the program. During this time, the Office will be gathering and analyzing relevant information, including comments from external and internal participants in order to determine what, if any, adjustments should be made to the program and whether the program will become permanent or be further extended.

The USPTO is only extending the FAI Pilot Program until August 16, 2012.  They hope to be able to complete their review of the program by then, including consideration of comments and suggestions from both internal and external sources.  With that in mind,  the USPTO is interested in receiving feedback as to whether the program is meeting the needs of its applicants, and whether any aspects of the program cause applicants to not participate.

Written comments must be received on or before August 8, 2012, and should preferably be sent by electronic mail message [email protected]. Comments may also be submitted by postal mail addressed to:

United States Patent and Trademark Office
Mail Stop Comments—Patents
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313–1450
ATTN: Joseph F. Weiss, Jr.

Like virtually all request for comments the USPTO has provided specific questions on which they seek comment.  The specifically delineated questions are:

(1) Based on your use of the program, did you experience the benefits of the FAI program set out above? Did you experience additional benefits?

(2) Did the Pre-Interview Communication provide you with sufficient, meaningful information to conduct an effective interview?

(3) How productive is the interview before first action in advancing prosecution?

(4) How would you rate the extent/ utility of the information provided in the Pre-Interview Communication and subsequent Office action?

(5) What changes would you make to the FAI program? How would these changes improve the program?

(6) For any application in which you decided that the FAI program would not meet your needs, what aspect of the program made the program unsuitable for the application?

(7) Do you consider the FAI program to be more efficient (or otherwise beneficial) as compared to traditional prosecution?

(8) Should the Office make the FAI program permanent?

The USPTO Federal Register Notice explains that this list of questions is not intended to be exhaustive and comments can be submitted on other matters as well.

If you ask me, I hope the program is made permanent.  I have heard nothing but good things about this pilot program.