USPTO Pilot Program May Benefit Patent Applications in the Fields of Computers and Data Processing

The USPTO has announced a pilot program in which certain patent applicants can meet with the Examiner to discuss the results of the Examiner’s prior art search before the Examiner issues a first Office Action. 

Under the new program, eligible applicants must submit a Request for First Action Interview Form before November 1, 2008.  The Examiner will conduct a prior art search and provide the applicant with the search results and an identification of potential rejections prior to the first Office Action.  The applicant will then have 30 days (with no extensions) to either: (i) decline the interview, or (ii) confirm the interview request and file any desired amendments.    The USPTO has published a set of suggested talking points for the interview.

The program, which will launch April 28, 2008, is available to patent applications that fall within one of the following two groups:

Group I:  filed on or before September 1, 2005; no first Office Action on the merits; classified in Class 709 (Electrical Computers and Digital Processing Systems; Multi-Computer Data Transferring); and assigned to USPTO working group 2140 or 2150.

Group II:  filed on or before November 1, 2006; classified in Class 707 (Data Processing:  Database and File Management or Data Structures); and assigned to USPTO working group 2160.

Certain other qualification criteria, including a requirement that the application contain no more than 20 claims, are described in the USPTO’s First Action Interview Pilot Program Notice.

This process could help to advance prosecution by allowing patent seekers to explain the invention to the Examiner and obtain the Examiner’s view prior to first action — effectively providing an additional Office Action in the form of the Examiner’s Pre-Interview Communication.  However, Applicants must be prepared to move quickly after receiving the Pre-Interview Communication:  the response deadline is one month, is not extendible, and will result in abandonment of the application if missed.

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