USPTO Expands and Extends Enhanced First Action Interview Pilot Program

By Vince Keil and Eric Rakestraw

The United States Patent and Trademark Office (USPTO) has announced that the Enhanced First Action Interview Pilot Program has been expanded and extended until May 16, 2012.

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). Previously, in October 2009, the program was expanded into 17 additional technology classifications. The program has now been extended to all utility art areas.

Normally, granting an interview before the first action on the merits in a new patent application is within the discretion of the Examiner. For applications that meet certain criteria, however, the procedure outlined in the pilot program makes the granting of an interview non-discretionary. Participants conduct an interview with the Examiner after receiving a Pre-Interview Communication, which discloses the results of the Examiner's prior art search and details any rejections or objections the Examiner intends to make.

Participants in the program have reported a number of benefits, particularly as a result of the enhanced interaction between the applicant and the Examiner. The interview provides an opportunity to resolve patentability issues one-on-one with the Examiner at the beginning of the prosecution process. For many applicants, this is an excellent opportunity to advance the prosecution of the application, and may help to facilitate early allowance of the application in appropriate cases.

Applications are eligible for the pilot program if they meet the following requirements: (1) the application is 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 contains three or fewer independent claims, 20 or fewer total claims, and no multiple dependent claims; and (3) the claims are directed to a single invention. If the Office issues a restriction requirement, the applicant must make an election without traverse or withdraw from the pilot program. The request for a first action interview must be filed electronically using the USPTO's electronic filing system, form PTO/SB/413C, and must be filed at least one day before a first Office Action on the merits appears in the PAIR system. Finally, 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.

At this time, no additional government fees are required for participation in the pilot program.

Full details regarding program eligibility and other information are available here.