USPTO Expands Patent Pre-Examination Interview Program

The USPTO has announced a one-year pilot program that allows patent applicants to request an interview with the examiner prior to the first office action.  This new pilot expands on previous programs that only covered applications in specific technology areas.

According to the USPTO, under the previous pilots:

Approximately 34 percent of the applications . . . were allowed on the first action on the merits, as compared to approximately 11 percent on average . . . for new non-continuing applications [that did not have in a first action interview].

The USPTO also notes that applicants who choose the program may receive several benefits, including  “the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process [and] the opportunity to facilitate early allowance.”

Any new or existing patent application may participate in the program, so long as it (a) meets certain limitations relating to the number of claims presented for examination, and (b) has not yet received a first office action.  To request a pre-examination interview, applicants must submit a form in which the applicant agrees to not (i) traverse any restriction requirement and (ii) request a refund of any search or excess claims fees. 

If the application meets the program criteria, before the first office action the examiner will issue a search report with relevant prior art and proposed rejections or objections.  Within 30 days of the report, the applicant may submit proposed amendments and/or written arguments to be discussed in the interview.  The examiner and applicant will then meet to try to reach agreement.  The USPTO has published a set of examiner talking points that applicants should expect the examiner to cover in the interview. 

If no agreement is reached during the interview, the applicant will then receive a written office action that summarizes the interview summary and states the formal rejections, and prosecution will continue its ordinary course. 

More details about the program are available in a full program summary that is published by the USPTO.

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